By Carla Monintja
The quote “There’s a light at the end of the tunnel” really inspires me, as it gives me hope that every difficulty I encounter can surely be resolved, as long as I make the effort to overcome it.
This quote was also apt in the situation that KAO Corporation (“KAO”) got itself into in Indonesia. KAO was dealing with several legal actions to defend one of its foremost marks, BIORE. It speaks volumes of a mark when one can just mention it and images of associated products are immediately brought to mind. Such was the power of BIORE, which conjures images of its cleansing preparations (soap, body wash, face wash, makeup remover, etc.). Naturally, KAO fought hard to defend BIORE and eventually win these legal battles.
The case began when KAO found out about the existence of BIORF, a similar mark for similar products. Although the products were not widely marketed throughout Indonesia, this was not a good sign for its business in the Republic. KAO discovered that BIORF had been registered on 7 February 2011 under registration number IDM000292510 in the name of PT. Sintong Abadi (“PT. Sintong”).
KAO decided to file a cancellation lawsuit against BIORF with the Jakarta Commercial Court. KAO argued that the similarity of the two registered marks BIORE and BIORF could potentially mislead the public and BIORE’s customers in particular. This would harm KAO’s business and long-term presence in Indonesia, where the BIORE trademark has been registered since 17 June 1982, and where KAO, as the owner of the BIORE trademark, has invested a lot of money to develop the goodwill of the mark. PT. Sintong stated in their arguments that BIORF is not similar to BIORE as BIORF consists of 2 syllables while BIORE consists of 3 syllables. PT. Sintong also claimed that the word of BIORF is taken from Chinese language and means “towards the freshness”, and generally, that BIORF was not an imitation of BIORE owned by KAO. PT. Sintong’s argument was accepted by the judges and therefore PT. Sintong won the case at the Commercial Court.
KAO, believing that it was right in filing the cancellation lawsuit against BIORF, decided to file for a cassation (appeal) at the Supreme Court. The Supreme Court then re-examined the case and included considerations made by the Commercial Court in deciding the case, along with evidences provided by both parties.
Subsequently, the Supreme Court held that:
- BIORE is categorized as a well-known trademark;
- The BIORF mark has similarity in substance compared to the BIORE mark;
- PT. Sintong filed the BIORF trademark in bad faith;
- The cancellation of the BIORF mark is allowed and PT. Sintong is to discontinue the use of the mark;
- The Trademark Office must obey the Supreme’s Court decision, and enforce the cancellation by deleting the trademark BIORF from the General Register.
It was the light at the end of the tunnel indeed for KAO, following this favourable decision by the Supreme Court.
This case also highlights the effectiveness of the Indonesian Supreme Court, as it continues to take steps to ensure that there is no compromise on the quality of its judges. The Judges in charge at the Supreme Court (known as “Hakim Agung”) are expected to have a good grasp of Intellectual Property Rights (IPR) and are required to pass a fit-and-proper test to affirm their competency. Lately one of the Hakim Agung candidates was rejected due to her lack of knowledge on IPR Law, despite having been a judge for 26 years.
If you would like clarification on the case or advice on any IPR matters in Indonesia, please don’t hesitate to contact us at kass@www.kass.com.my.
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