The Cannon Trademark Battle: Legal Protection in Indonesia vs. Philippines

In the world of intellectual property law, trademark protection is crucial. However, trademark protection can face complex legal challenges. One such case is the trademark cancellation lawsuit filed by Telentgan Brothers & Sons Inc. against Yafet Santoso and PT. Anugerah Pangan Borneo involving the 'Cannon' trademark. This article will discuss the legal principles involved in this case, as well as examine the comparison of trademark protection laws between Indonesia and the Philippines.

Case Overview:

Telentgan Brothers & Sons Inc. has filed a trademark cancellation lawsuit against Yafet Santoso and PT. Anugerah Pangan Borneo, challenging the validity of the trademarks "Executive Cannon Signature + Device", "Cannon King + Device" and "Cannon Menthol + Device". These trademarks, owned by the defendants, are registered under Class 34, which covers products related to tobacco and electronic smoking goods. The plaintiff claims that these trademarks infringe on the plaintiff's "Cannon" brand, which is already registered and used for similar products in the same industry.

Does the 'Cannon' Trademark Have Legal Protection in Indonesia?

A key element of this lawsuit is the claim that the plaintiff's "Cannon" trademark is registered in Indonesia and protected by law. However, after checking the Indonesian Intellectual Property Database, it was found that the registration status of the 'Cannon' trademark is still in process. One of the trademarks was rejected by the Trademark Appeal Commission, while the other is still under Substantive Examination. This means that, although the plaintiff claims ownership of the 'Cannon' trademark, they cannot yet be considered the legal owner of the trademark according to official records.

This raises an important question: Can the court declare that the plaintiff is the legal owner of the 'Cannon' trademark, given that its registration status is still pending? According to Indonesian trademark law, a trademark can only be protected once it has undergone the proper registration process with the Indonesian Intellectual Property Office. If the trademark is not yet registered or still in process, the court cannot declare the plaintiff as the legal owner of the trademark.

Allegation of Bad Faith:

Another significant aspect of this case involves the accusation of bad faith on the part of the defendants. The plaintiff claims that the defendants registered their trademarks with the intention of taking advantage of the plaintiff's 'Cannon' brand reputation in the market. Under Indonesian law, filing a trademark application with bad faith, such as to deceive the public or cause unfair competition, is a valid ground for trademark cancellation.

Article 21 of Indonesia's Trademark Law (UU No. 20/2016) clearly states that trademark registration with bad faith is prohibited. If proven, the court may cancel the registered trademark. The plaintiff argues that the defendants intentionally filed for similar trademarks in order to confuse consumers and undermine the identity of their well-established brand.

Bad Faith in the Plaintiff's Petition:

In the plaintiff's petition, there is an interesting request to be noted: "Declare that the plaintiff is the owner of the registered CANNON trademark in Indonesia". This raises further discussion on whether the court has the authority to declare the plaintiff as the legal owner of the 'Cannon' trademark, given the pending registration status of the trademark.

Upon checking the Indonesian Intellectual Property Database, it was found that there is indeed a 'Cannon' trademark owned by Telentgan Brothers & Sons Inc., one of which was rejected by the Trademark Appeal Commission, and the other is still under Substantive Examination. Therefore, no final decision has been made confirming the plaintiff's legal ownership of the trademark.

Can the Court Declare the Plaintiff as the Legal Owner of the Registered Trademark in Indonesia?

It is important to note that although the plaintiff claims to own the 'Cannon' trademark, the pending registration status poses a significant hurdle. According to Indonesian trademark law, a trademark that has not yet been registered or is still in process cannot be considered a legally protected trademark. If the trademark has not been registered in the Intellectual Property Database or has not been officially approved by the Directorate General of Intellectual Property, the court cannot declare the plaintiff as the rightful owner of the trademark.

The defendants may argue that until the substantive examination is complete or the appeal decision is made, the plaintiff cannot be considered the legal owner of the 'Cannon' trademark. Therefore, the court must carefully consider the legal status of this trademark before making a ruling that could impact the defendants' rights.

Conclusion:

This case highlights crucial issues in trademark protection and preventing bad faith trademark filings. As intellectual property enforcement mechanisms continue to evolve in Indonesia, cases like this demonstrate the importance of safeguarding trademark integrity from fraudulent or opportunistic filings. This case also reflects the challenges faced by trademark holders in protecting their brand identities in a competitive market.

However, in this discussion, an important question remains: Does the court have the authority to declare the plaintiff as the legal owner of the 'Cannon' trademark in Indonesia, given that the registration status is still pending? The court may face challenges in making a ruling on this matter before there is a clear decision from the Directorate General of Intellectual Property regarding the trademark's registration status.

As international IP attorneys, it is important to monitor cases like this, particularly those related to the protection of trademark value and the enforcement of trademark rights across jurisdictions.

For further inquiries or discussions on trademark protection or any other intellectual property law matters, please feel free to contact us at info@arbil.co.id.