Who doesn’t know VIAGRA (Sildenafil Citrate)? This brand name or trademark owned by US pharmaceutical giant Pfizer Inc., for treating erectile dysfunction, is well-known all over the world, and Indonesia is no exception.
The VIAGRA trademark has been registered in Indonesia since 15 November 1996 for goods in class 05, particularly for medication of erectile dysfunction. As a result of its long term presence, VIAGRA has acquired substantial reputation and goodwill in the Republic.
Recently, a local businessman by the name of Benny Djaja tried his luck in filing a trademark application to register SIAGRA for goods in class 05 under his name. The goods stated in the application were exactly the same as the goods registered under the VIAGRA trademark. Moreover, it was quite obvious to see that VIAGRA and SIAGRA were similar in substance. So it was unclear what basis of consideration the Trademark Office used in approving the trademark SIAGRA to be registered in class 05 under trademark certificate number IDM00009487.
Of course, this was an unfavorable situation for Pfizer as the creator and owner of the VIAGRA mark. VIAGRA itself has been registered in 142 countries around the world. Pfizer thus did not need further consideration to raise an objection against the registration of the SIAGRA trademark and filed a lawsuit to cancel the mark at the Commercial Court. It was clear for Pfizer that the SIAGRA trademark was filed in bad faith.
The lawsuit against SIAGRA at the Commercial Court was filed based on two grounds: (i) that the application had been made in bad faith and (ii) the application is for a mark similar to the mark/well-known mark owned by another party that has been registered for goods and/or services of the same type.
Following the trial, the Court found in favour of Pfizer and ordered the cancellation of the registration of SIAGRA under trademark certificate number IDM00009487 in the name of Benny Djaja, based on the similarity in substance with the VIAGRA mark. The Judges also recognized that VIAGRA is categorized as a well-known trademark internationally; therefore it attested that the application of the SIAGRA mark was done in bad faith.
This case comes as good news to owners of well-known marks. What happened to Pfizer in this case happens quite regularly to owners of well-known trademarks in Indonesia. Unfortunately, in Indonesia a trademark cannot be cancelled at Registry level and has to be challenged at Court, which proves to be an expensive procedure to trademark owners. This is one of the many cases in Indonesia that we will bring to your attention in time.
Should you have any queries on your or your client’s trademark matters in the Republic, do let us know and we will get back to you as quickly as we can.
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