GS Yuasa v GenSmart: Trademark Cancellation in Indonesia

GS Yuasa Corporation, a leading Japanese battery manufacturer (JP), has filed a Trademark Cancellation Action before the Commercial Court at the Central Jakarta District Court against two registered trademarks in Indonesia: “GenSmart” (Registration No. IDM001083940) and “GEN SMART” (Registration No. IDM000808715).

Both trademarks fall under Class 09 and are owned by CV. SAMA SAMA MAJU, an Indonesian company (ID). The lawsuit, filed on 20 October 2025, was officially registered under Case No. 123/Pdt.Sus-HKI/Merek/2025/PN Niaga Jkt.Pst.

According to GS Yuasa Corporation, “GenSmart” and “GEN SMART” contain elements that bear a substantial similarity to the trademark “GS”, which the company has long used and protected globally for similar goods. This claim refers to Article 21(1) (b) of Law No. 20 of 2016 on Trademarks and Geographical Indications, which prohibits the registration of trademarks that are identical or substantially similar to a well-known trademark for similar goods or services.

GS Yuasa argues that the registration of “GenSmart” and “GEN SMART” may mislead consumers and dilute the distinctiveness of the trademark “GS”, a mark recognized worldwide, including in Indonesia.

Additionally, the Directorate of Trademarks and Geographical Indications was named as a Co-Defendant, in accordance with Article 92 of the same law, which stipulates that:

“The cancellation or deletion of a registered mark shall be carried out by the Minister by striking out the concerned mark and noting the reasons and date of such cancellation or deletion.”

This provision highlights the Directorate’s administrative role in implementing trademark cancellations once a court decision has become final and binding.

A Series of Trademark Disputes: GS Yuasa’s Consistent Enforcement Efforts

A review of the official website of the Commercial Court in Central Jakarta shows that this is not the first time GS Yuasa Corporation has initiated trademark cancellation proceedings in Indonesia.

The company had previously filed similar cases, one in 2014 and two in 2019, against different defendants. These disputes proceeded beyond the Commercial Court stage to the Cassation stage and even to the Judicial Review stage before the Supreme Court of the Republic of Indonesia.

This track record demonstrates GS Yuasa’s strong commitment to protecting its trademark rights and its consistent legal enforcement strategy in Indonesia, one of Southeast Asia’s most dynamic and competitive IP jurisdictions.

However, based on publicly available data from the Commercial Court, many local Indonesian trademarks continue to face legal challenges from owners of internationally recognized trademarks. Notable examples include cases involving Bose, Puma, Pierre Cardin, Superman, and others, illustrating that trademark imitation remains an ongoing challenge in Indonesia.

Such disputes underline the need for stronger trademark examination standards, greater public awareness, and consistent IP law enforcement to uphold market integrity.

Protection of Well-Known Trademarks: Legal and Strategic Significance for Foreign Owners

Under Indonesian law, well-known trademarks receive special legal protection, even without prior registration, provided the owner can demonstrate the mark’s reputation and recognition among relevant consumers.

For foreign companies and trademark owners, this principle is crucial to safeguard their intellectual property rights from bad-faith registrations by third parties.

Trademark protection in Indonesia is therefore not merely administrative but a matter of strategic litigation requiring deep understanding of both local practice and judicial interpretation. The GS Yuasa case serves as a reminder that proactive trademark enforcement is essential for international trademark owners seeking to maintain their commercial presence and reputation in Indonesia and across ASEAN.

The Core Challenge: Proving Bad Faith in Trademark Registration

One of the most complex aspects in trademark cancellation proceedings in Indonesia is proving bad faith on the part of the registrant.

Bad faith cannot be proven by documentary evidence alone, it requires comprehensive legal reasoning, contextual understanding, and awareness of the registrant’s intent. Courts may consider evidence such as the registrant’s pattern of behavior, knowledge of the existing trademark, or attempts to exploit a well-known mark’s reputation.

Effectively proving bad faith demands the expertise of seasoned Intellectual Property (IP) Lawyers who understand the procedural nuances and judicial trends in Indonesia’s Commercial Court system.

ARBIL & Co. has extensive experience in Trademark Cancellation, Trademark Deletion, and Intellectual Property Litigation across all judicial levels, including the Supreme Court. The firm’s track record in trademark enforcement and strategic protection has established it as a trusted advisor for multinational corporations seeking competent and result-oriented legal representation in Indonesia.

Legal Analysis: Substantial Similarity and Judicial Considerations

A key legal issue in this case is whether the use of the element “GS” in “GenSmart” and “GEN SMART” constitutes substantial similarity with GS Yuasa’s registered trademark “GS”.

Indonesian courts typically assess similarity not only from a visual standpoint, but also phonetic and conceptual perspectives. Under international principles, if a new trademark creates an association or commercial impression resembling a prior well-known mark, that may suffice to establish similarity in its essential part.

Ultimately, it will be up to the panel of judges to determine whether such similarity warrants cancellation, after evaluating arguments, documentary evidence, and supporting witnesses from both sides. Factors such as the registrant’s intent, prior reputation of the trademark, and potential consumer confusion will play a decisive role in shaping the judgment.

Why Strategic Legal Counsel Matters?

The GS Yuasa Corporation vs CV. SAMA SAMA MAJU case reflects a broader trend: international trademark owners are increasingly relying on Indonesian courts to protect their rights. Such cases not only safeguard private interests but also strengthen Indonesia’s position as an active participant in global IP enforcement.

For foreign trademark owners and multinational businesses, engaging qualified legal counsel is essential to ensure effective protection against potential bad-faith registrations or infringement.

At ARBIL & Co., we provide comprehensive legal services in Intellectual Property, including trademark registration, cancellation, enforcement, and litigation. Our IP Lawyers possess substantial experience before Indonesia’s Commercial Courts and the Supreme Court, combining in-depth technical knowledge with practical courtroom insight.

For further discussion on Trademark Cancellation Actions or to explore how ARBIL & Co. can assist your company in protecting and enforcing trademarks in Indonesia, please contact us at info@arbil.co.id or visit our website at https://arbil.co.id/.

ARBIL & Co. – Your Trusted Partner in Intellectual Property Law and Trademark Protection in Indonesia.