WIPO Lex

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

Session 1: Emerging Issues in Trademarks

Supreme Court of the Republic of Indonesia [2016]: BMW Aktiengesellschafft v Hendrywo Yuwijoyo, Case No. 29 PK/Pdt.Sus-HKI/2016

Date of judgment: May 11, 2016
Issuing authority: Supreme Court of the Republic of Indonesia
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Civin( �br> Subject matter: Trademarks; Enforcement of IP and Related Laws
Plaintiff: BAYERISCHE MOTOREEN WERKE AKTIENGESELLSCHAFFT (BMW)
Defendant: HENDRYWO YUWIJOYO (Henrywo Yuwijoyo Wong)
Keywords: Bad faith, Well-known marks

Basic facts: The Plaintiff owns the “BMW” word mark and the BMW logo, shown below. The BMW word mark was first registered in 1929 in Germany. Currently, the Plaintiff has trademark registrations for the letters BMW in more than 150 countries, including Indonesia. The Plaintiff also has multiple registrations for the BMW logo. In Indonesia, the Plaintiff has as many as 30 trademark registrations, in various classes and types of goods.

The BMW logo features a circular design from the logo of Rapp-Motorenwerke, the pioneer of BMW, AG but with BMW lettering at the top of the outer circle. The BMW logo is believed to be closely related to the production of aircraft engines. The logo consists of four quarter-circle sections in white and blue alternately. It is a stylistic/artistic representation of an airplane propeller spinning in a clear blue sky. White and blue are also the traditional colors of Bavaria, which is where the headquarters of the Plaintiff are located.

The Defendant’s trademark BMW BODY MAN WEAR is registered with Registration No. IDM000016513, dated September 17, 2004, for class 25 goods, with goods type Apparel. The Defendant’s logo is also registered for class 25 goods. Although the logo belonging to the Defendant under Registration No. IDM000181631 is registered in black and white, the Defendant used it in blue and white, with the letters BMW.

The Defendant manufactured clothing, such as jeans, using the “BMW BODY MAN WEAR” trademark printed on a label that also contained a picture of the Plaintiff's famous BMW car.

The Plaintiff filed an invalidation claim against the trademark “BMW BODY MAN WEAR” (Registration No. IDM000016513) and the aforementioned logo (Registration No. IDM000181631, dated October 20, 2008) belonging to the Defendant, on the basis that they are similar to the Plaintiff's registered trademarks for similar and non-similar goods.

The Plaintiff alleges that under Articles 4 and 6 of the Law of the Republic of Indonesia No. 15 of 2001 Regarding Marks (repealed and replaced), the Defendant submitted its trademark registration applications in bad faith, and the registrations of its marks should therefore be canceled. In support of its suit, the Plaintiff submits that the BMW word mark and logo are well-known in Indonesia and internationally.

The Plaintiff alleges that the Defendant piggybacked on the fame of its well-known trademarks, the Plaintiff having earned that fame through continuous efforts. For example, the image of the car on the label used by the Defendant is immediately recognizable as a car designed and manufactured by the Plaintiff, as this image is a photograph of the actual model produced and widely promoted by the Plaintiff.

The Commercial Court of the Central Jakarta District Court granted the Plaintiff's claim in its entirety, stating that the Defendant’s BMW BODY MAN WEAR brand had similarities with the well-known BMW brands and the Plaintiff's BMW logo for unsimilar goods and stating that the Defendant registered its mark in bad faith.

On appeal, the Supreme Court overturned the decision of the Commercial Court, rejecting the Plaintiff's claim.

The Plaintiff filed an application for review of the Supreme Court’s decision, arguing that the Supreme Court erred in not accounting for the existence of bad faith in accordance with Article 4 of the Law Regarding Marks. The Plaintiff presented new evidence, namely, printed results from the WIPO Global Brand Database indicating a rejected Application for Registration of the BMW BODY MAN WEAR mark and logo in the name of the Defendant.

Held: At the review instance, the Supreme Court revoked both the first instance Supreme Court decision and the decision of the Commercial Court, ruling instead that the Plaintiff's claim was inadmissible, because the Indonesian Law Regarding Marks had not provided for claims for the cancellation of marks that have similarities in essence with well-known trademarks for non-similar goods. Under Article 6(2) of the legislation then in force, protection for well-known marks against registration of similar marks for non-similar goods was made subject to certain requirements being stipulated by government regulation, which had not been enacted. As clarified by Supreme Court Circular No. 03/BUA.6/H.S/SP/XII/2015, “a claim for cancellation of a trademark that has a principal similarity with another party’s trademark for goods or services that are not of the same kind, must be declared ‘unacceptable’ because it has not been regulated in the Indonesian trademark law”.

Relevant holdings in relation to emerging issues in trademarks: The Supreme Court held that in this case, because the application for cancellation had not been regulated in the legal regime for trademarks in force at the time, the BMW BODY MAN WEAR mark could be registered despite having similarities with a well-known mark for non-similar goods.

Because the Supreme Court found the claim to be formally inadmissible, it did not consider the issue of bad faith, as it did not enter the subject matter of the case.

Note: Law No. 15 of 2001 Regarding Marks has since been replaced with Law No. 20 of 2016 on Trademarks and Geographical Indications. Under Article 21, paragraph (1)(c) of this 2016 revision, a trademark registration application is refused if the mark is substantively similar or identical to a well-known mark for different goods and/or services complying with certain requirements.

Relevant legislation:
Article 4 and Article 6 of the Law of the Republic of Indonesia No. 15 of 2001 Regarding Marks
(repealed and replaced by the Law of the Republic of Indonesia No. 20 of 2016 on Trademarks and Geographical Indications)

Article 19, paragraph (3) of Ministerial Regulation No. 67 of 2016