Are you a fan of cycling? If the
answer is yes, then you must already be familiar with the brand BMC. BMC
is a well-known brand in the world of sports and bicycles. The quality
and speed of BMC bikes helped build the Switzerland born brand into what
it currently is, in terms of popularity. Everyone who uses the bikes
guarantees their high quality. The brand is so trusted that athletes
brought the bikes produced by BMC Group Holding AG to world
competitions.
Recently, there’s news about trouble
brewing between BMC Group Holding AG who has been marketing and using
the BMC trademark for decades and an individual who has registered and
been using their own BMC trademark in Indonesia. The dispute started
when BMC Group Holding AG sued BMC in order to get the local trademark
canceled by The Central Jakarta Commercial Court. However, it seems the
local trademark isn’t happy with the lawsuit, so they decided to sue BMC
Group Holding AG for using a trademark similar to their already
registered trademark to market the same class of product in Indonesia.
The Crux of The Dispute
On 16 November, 2021, BMC Group Holding
AG registered their lawsuit numbered 76/Pdt.Sus-HKI/Merek/2021/PN Niaga
Jkt.Pst. The lawsuit was directed at Edina Nathania, owner of the local
BMC trademark. According to the public information shared by Central
Jakarta District Court Case Investigation Information System, we have
established that the core reason for the lawsuit is because the local
BMC trademark that was registered and used to sell class 12 products,
which in this context is bicycles, is identical to the world famous BMC
trademark owned by BMC Group Holding AG, which is also used to market
bicycles.
Edina Nathania in turn also sued the
Swiss based company for a different reason. In her lawsuit, numbered
7/Pdt.Sus-HKI/Merek/2022/PN Niaga Jkt.Pst, she states that she alone is
the lawful owner of the BMC trademark in Indonesia. The local BMC
trademark has been registered since 5 June, 2012.
BMC Group Holding AG argued that they
are the sole owner of the BMC trademark because the trademark has been
used and registered by the company in multiple countries all over the
world. The Swiss company also stated that the registration of the local
BMC trademark by Edina Nathania is a form of bad faith because it copies
the already known BMC trademark.
What we can conclude here is that both
parties have the right to sue the other party. Swiss based BMC feels
they were the one who invented the BMC trademark, built it into the
popular brand it is today. They find that a similar brand exists in
Indonesia and has been registered and used since 2012, therefore in
their perspective, stealing their potential market, because they now
can’t use their trademark to sell their products. It isn’t great for the
local BMC either, because they did register the trademark first.
According to the Indonesian trademark law, the party who registered the
trademark first, has exclusive rights to it. So it makes sense for the
owner of the local BMC to be protective towards the trademark.
How Does The Trademark Law Apply In This Case?
We need to talk about Edina Nathania’s
rights as the owner of the local BMC trademark. According to Article 3
of Law Number 20 of 2016 about Trademark and Geographical Indication,
trademark rights are obtained when a trademark is registered. Explained
in Article 1 number 5 of the same Law, exclusive rights are given to the
owners of registered trademarks for a specific period of time by using
the trademarks themselves or giving permission to other parties to use
them. Having ownership of a trademark means you have the right to
protect the trademark itself, and also your rights surrounding it.
However, Article 21 Paragraph (1) letter
b of the Trademark and Geographical Indication Law states: “ The
application is rejected if the trademark has similarities in principle
or in its entirety to:… a well-known trademark belonging to another
party for similar goods/and or services”. The Elucidation of the Article
explains that a trademark is considered well-known if it is seen from
the general knowledge of the community, the reputation of the trademark,
the investment in several countries made by the owner and the trademark
has been registered in other countries. It should also be emphasized
that for this argument to be used, the well-known trademark in this
context has to predate the trademark its suing, for example, in this
case BMC Switzerland has existed since 1994, way before the local BMC
trademark.
For more details regarding the criteria
for well-known trademarks in Indonesia, see the Regulation of The
Minister of Law and Human Rights Number 67 of 2016 concerning Trademark
Registration. Article 18 Paragraph (3) of said Regulation stipulates
that: “ In determining the criteria for a trademark to be considered a
well-known trademark as referred to in paragraph (1), it is carried out
by considering:
- Level of public acknowledgement of the trademark in the relevant business field as a well-known trademark;
- The sales volume of goods and/or services and the profits derived from the use of the trademark by the owner;
- Market shares controlled by the trademark in relation to the circulation of goods and/or services in the community;
- Coverage area of trademark usage;
- Time frame of the trademark usage;
- Intensity and promotion of the trademark, including the value of the investment used for the promotion;
- Trademark registrations or pending applications in other country;
- The success level of
law enforcement in the field of trademarks, in particular regarding the
recognition of such trademarks as famous trademarks by authorized
institutions; and/or services in the community;
- The value attached to
the trademark obtained by reputation and quality assurance of goods
and/or services protected by the trademark
If BMC Group Holding AG manages to prove
that their trademark fulfilled the above criteria, then the argument
that their trademark is a well-known trademark can be used.
Just as the owner of a registered
trademark can file a lawsuit against the use of their mark by another
party, the owner of a well-known trademark can also sue on the basis of
the use of a trademark that is identical to theirs. Article 77 paragraph
(2) of the Law on Trademark and Geographical Indication states that a
lawsuit for the cancellation of a trademark can be made indefinitely if
there is an element of bad faith. If BMC Group Holding AG can prove
that there is an element of bad faith in the registration of the local
BMC trademark, then the application for cancellation of the trademark
made by the company can be considered valid.
The local BMC’s task in this case is to
push the narrative that their trademark is lawful and was not registered
in bad faith to imitate a well-known trademark.
Keep an eye on our social media or this
site for new information about Intellectual Property in Indonesia. If
you or your friends need further information regarding Intellectual
Property, please do not hesitate to contact us via e-mail marketing@ambadar.co.id.
Source(s):
- Law Number 20 of 2016 concerning Trademark and Geographical Indication
- detiknews
- Central Jakarta District Court Case Investigation Information System
- Regulation of The Minister of Law and Human Rights Number 67 of 2016 concerning Trademark Registration
