A Singaporean business that had filed a lawsuit against
Some of the key issues presented to the court were, among others:
- Whether 'Strong' is a descriptive mark that cannot be monopolised by a single party;
- Whether the mark's status as a sub-brand to the famous mark 'Formula', reduced the risk of consumer confusion, particularly when compared to another famous brand 'Pepsodent' included in the defendant's mark;
- Whether the lawsuit was premature since the applications for 'Pepsodent Strong 12 Jam' remained pending; and
- The amount of damages to award, if any.
The wordmark and combination mark "Pepsodent Strong 12 Jam" ('jam' meaning "hour" in Bahasa Indonesia) covering toothpaste and other class 03 goods were applied for in 2019 by the defendant's holding company,
As a member of the Indonesian conglomerate
Judgment
The Commercial Court did not specifically decide whether or not the word "Strong" is descriptive of toothpaste in its ruling from
The court further determined that despite all of the plaintiff's evidence of commercial use containing both "Formula" and "Strong" combined, the fame of the house marks "Formula" and "Pepsodent" was immaterial to their consideration of similarity because the registered mark at issue was "Strong" by itself. The court determined that the plaintiff's registered mark "Strong" and the defendant's mark "Pepsodent Strong 12 Jam" were substantially similar. Because of this, the court determined that the plaintiff was more likely to be confused and that the defendant's acts amounted to infringement.
The "Pepsodent Strong 12 Jam" applications were still being thoroughly reviewed, but the court did not view the lawsuit as being filed too soon. Additionally, it granted the plaintiff's demand for material damages, which covered the expenses used in creating the mark "Strong," including advertising expenses for TV and offline campaigns and the alleged reduction in gross margin in 2019. In the meantime, the plaintiff's request for immaterial damages-which was purportedly made to restore the reputation of the 'Strong' brand after infringement-was denied by the court.
The 2016 Indonesian Trademark Law's civil infringement provisions don't specify statutory maximums or how damages should be determined. The court's decision to accept only material losses, nearly all of which were backed by comprehensive evidence, and to reject immaterial damages, which were not, can therefore be viewed as instructive for determining damages in subsequent trademark infringement cases.
Conclusion
It must be emphasised that the Indonesian trademark registry is full of what most would consider extremely descriptive marks, many of which were registered a long time ago, leaving aside arguments over whether "Strong" should have been determined to be descriptive. If a mark has been registered for more than five years, such as "Strong," it would no longer be subject to annulment due to descriptiveness. Considering that registration would offer a complete defence to accusations of infringement, this case illustrates the risk that these registrations can represent as well as the potential drawback of utilising marks before they have been registered. The risk is increased by the lack of a precise legislative formula or technique for calculating damages.
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Two major Indonesian consumer products companies,
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