By Carla Monintja
Many women, even those who are not fashionistas, are quite passionate about fashion, taking to certain trends that suit them and make them feel comfortable and confident. One company that has made it a mission to provide affordable and trendy apparel to the masses is Forever 21, which would be a familiar and accessible brand to most people in Jakarta and across the world, as a global brand with 450 retail outlets in at least 41 countries.
In Indonesia, Forever 21 has been around for about four years, but its presence has not been without its share of problems. While not related to their sales, these problems could potentially influence their growth and business expansion in the Republic.
Ideally, before we set out to develop a business in a new country, we must ensure that all business aspects related to IP rights are fully protected. Unfortunately this was not the case with Forever 21 here. The “Forever 21” mark has been registered in Indonesia in classes 35 and 25 under Forever 21, Inc. However, their registration in class 25 covers very limited kinds of goods, namely “scarves, hats and shawls”. The registration process for the mark in this class was particularly complicated and it was finally registered in Indonesia after almost five years, following a decision made by the Trademark Appeal Commission in 2009. This was due to another “Forever 21” mark, which had been registered earlier in class 25 under Sudarno Hartono, an Indonesian businessman.
The “Forever 21” mark owned by Hartono covers a wide range of goods in class 25: “All kinds of garments namely: long sleeved shirts, short sleeved shirts, trousers, shorts, jeans, men’s underwear, women’s underwear, sport pants, t-shirt, singlet, pajamas, bra, blouse, rain coat, babies’ clothes, babies’ pants, shoes, sandals, belts”. This, of course, was not a favourable situation for Forever 21, Inc. in doing their business in Indonesia as the list encompassed their main goods.
Based on this, one might think that Hartono filed his “Forever 21” trademark in bad faith. That, however, would depend on the outcome of the trademark cancellation lawsuit filed by Forever 21, Inc. against Hartono and his “Forever 21” trademark. At the time of writing, the trial is still ongoing.
In view of the above situation, if you are considering expanding your business, it would be wise to pay attention to your IP rights, in this case trademark protection. Some countries – including Indonesia – adopt the “first-to-file” system for trademark registration, and thus filing for trademark protection should be prioritized. In the first-to-file system, anyone can file a trademark application without any evidence to prove that they have been using the trademark. Of course this situation has created opportunities for registration of trademarks in bad faith where parties can easily copy and then apply to register trademarks created and used by others. There are many such cases, usually ending in a litigation process for trademark cancellation.
With a bit of planning and forward thinking, you can avoid the hassle and heartbreak associated with having to fight off copycats in any country that you have decided to venture into. By mapping out important markets and identifying the type and scope of IP rights available in those jurisdictions early on, a systemized IP prosecution strategy can be devised. This allows you to expand your business and secure protection for your IP rights on a stage-by-stage basis, and this way, not only will you be able to penetrate foreign markets at the ideal moment, but by simultaneously obtaining the relevant registered IP rights, you will also be one step ahead of your competitors!