Successful brands will undoubtedly inspire certain parties to take advantage of them, whether it is against the law or not. Companies who have created successful brands tend to be optimistic with regard to their sales, they expect it to climb steadily to consistently reach the company’s goals. They might achieve this by pushing their marketing department and/or advertising agencies, to put their brand in the public spotlight and attract consumers. Such projects will consume huge costs but will bring the products closer to the consumers.
Of course, consumers’ acceptance of the products will vary. Some consumers will be happy with the products, some may be dissatisfied and look for other products, and others may take advantage of the products. The latter refers to parties that realize the exceptional quality of the products and the goodwill of the brands. When looking to establish their own business, they will obviously strive to keep costs low, but aim to earn high profits. What better way to do this than by taking advantage of existing famous brands? So they start by creating similar brands, logos, or concepts for their products.
The above mentioned paragraph is not a fiction. It is, in fact, quite real. Several big companies and owners of famous brands are facing this very problem around the world.
The Chillington Tool Company (“the Company”) is a British company that is famous around the world for its products, particularly for agricultural tools. This company has business representatives around the world, including Indonesia. With its expansion into Indonesia, the company filed for the registration of its famous brand, “Chillington Crocodile with Crocodile Logo” for goods in Class 08. This was registered in Indonesia since 1993 and renewed in 2003 under renewal number IDM000039450.
After some years, an Indonesian named Hertiny Soedjianto filed similar trademarks in Class 08. On 23 November 2000, she filed an application for the trademark CROCODILE in Class 08, which was registered under number IDM000001038. Evidently, filing only one CROCODILE trademark was insufficient for her as she filed another trademark of CRD CROCODILE & Logo, registered under number IDM000247912, on 20 August 2004. Hertiny was not alone as another Indonesian, Surya Soedharma, also filed for registration of the trademark CROCODILE & Logo in Class 08 on 21 December 2000, which was registered under number IDM00032120.
The Company believed that the existing trademarks owned by the Indonesians were filed in bad faith. As the first trademark owner of the lot, the company had reasons to object to the registrations. The Company filed a cancellation lawsuit against Surya, which it won easily, as the panel of judges was also of the opinion that the trademark owned by Surya would mislead the public.
The Company filed a cancellation lawsuit against Hertiny as well. At this stage, the company also won easily since the panel of judges indicated that Hertiny had filed the similar trademark in bad faith. However, Hertiny refuses to accept the decision and filed an appeal on 24 November 2011 through her lawyer, on the grounds that the time limit to initiate the lawsuit had already expired, since the trademark has been registered for seven years. Pursuant to Indonesian Trademark Law, her argument is not completely true, since a cancellation lawsuit can be filed regardless of time limitation if it was filed in bad faith.
Companies and owners of famous trademarks should consider setting aside funds to protect their IP rights around the world and to fight for their trademarks when faced with similar situations. However, court proceedings should be the last option where possible. What happened to The Chillington Tool Company could have been avoided, if they had conducted a watching service and initiated an opposition action when the applications owned by Hertiny Soedjianto and Surya Soedharma were initially published for opposition.