Christian Dior loses BABY DIOR appeal
Christian Dior's appeal to the Supreme Court in the BABY DIOR dispute has failed.
Christian Dior filed an action with the Jakarta Commercial Court for the cancellation of Kimsan Purwo's trademark BABY DIOR, registered for bicycle products in Class 12 of the Nice Classification. The court ruled that there was no similarity between the marks in sound, speech and appearance. In addition, it noted that BABY DIOR and CHRISTIAN DIOR covered goods in different classes, and stated that the word ‘baby’ is public property that can be found in dictionaries and used by anyone.
Further, the court did not agree with the plaintiff's other arguments that:
- the defendant had registered the mark in bad faith; and
- CHRISTIAN DIOR is a famous mark.
Christian Dior filed a cassation appeal to the Supreme Court, which was rejected. Christian Dior's huge portfolio of DIOR marks, as well as variations, in various classes in Indonesia did not include BABY DIOR; neither did Christian Dior’s registrations include any marks for Class 12 goods.
This case shows the difficulties faced by owners of famous trademarks when seeking to protect their marks in Indonesia. First, protection against similar trademarks for dissimilar goods has a somewhat uncertain status, with missing government regulations to blame. Some judges apply Article 16(3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) directly. Others, as in this case, do not (arguably, this is a TRIPs breach).
The second issue is bad faith. Too many cases are filed with weak or no evidence of bad faith, which leaves the courts able to say that there is no evidence of bad faith. Evidence preparation is critical.
Christian Dior has a second right of appeal, but the test for this appeal is much higher. According to commentators, this shows that brand owners must register all their marks in all classes; however, that is impossible in practice. Arguably, cancellation proceedings are supposed to protect against trademark piracy like this.
Nick Redfearn, Rouse, Indonesia
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