Background
CRC Industries has been a producer and distributor of industrial chemicals used in the maintenance and repair of marine, electrical, industrial, automotive and aviation equipment since 1985. The company has the rights to the trade mark ‘CRC’ and its variants. CRC Industries registered their trade marks for products in classes 1, 2, 3 and 4 in many countries in the world including Indonesia. The trade marks ‘CRC’ were registered for the first time in Indonesia in 1990.
An Indonesian company registered two trade marks “C&C Logo” in class 1 for products that are similar to CRC Industries’ products.
Action taken
CRC Industries filed a lawsuit against the Indonesian company at the Commercial Court.
Outcome
The Commercial Court declared that CRC Industries had exclusive rights to the use of the ‘CRC’ trade mark and its variants, for all kinds of goods in class 1 in Indonesia. Moreover, the Court formally recognised the trade mark as being well-known. The two infringing trade marks were cancelled because they were similar to CRC Industries’ well-known trade mark.
The case was then brought before the Supreme Court for review. The Supreme Court retained the Commercial Court’s decision and imposed a fine of IDR 5 000 000 (approx. EUR 304) on the Indonesian company.
Lessons learned
Bad-faith trade mark registration may occur when a third party (for example, a trade mark squatter or local company) intentionally registers a trade mark that is identical or confusingly similar to another trade mark in order to benefit from it. Using well-known trade marks, or ones similar to them, can help crooks to mislead consumers and gain unfair advantages. This has made well-known trade marks vulnerable to a number of bad-faith registration cases in South-East Asian countries. Businesses should regularly monitor trade mark databases, the internet and any other relevant sources to quickly detect potential infringements.
Case source: http://asean-ipcaselaw.org/system/files/caselaw/IDCL2015000000073.pdf