Counterclaim heard in same proceedings as cancellation action
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In Handojo v Director General of Intellectual Property Rights, the Indonesian Commercial Court has raised the hopes of trademark owners facing the grim and costly task of tackling trademark infringers in Indonesia.
The plaintiff, Rudi Handojo, sought to legitimize his counterfeiting operation by applying to register a trademark belonging to an Australian company, GPI Automotive. GPI's managing director, Colin Edwards, opposed the application, filed an application in his own name for the well-known BLACK DIAMOND mark and notified the Trademark Office of the pirate trademark application.
The office temporarily suspended Handojo's application. Edwards' application proceeded to registration, and the office then rejected Handojo's application based on a prior registration and bad faith.
Handojo brought proceedings in the Commercial Court claiming that the office had wrongfully rejected his application because it was filed first. Edwards counterclaimed for trademark infringement. Edwards' evidence of Handojo's use of the BLACK DIAMOND mark demonstrated how Handojo had copied GPI's packaging, right down to the use of Australian contact details.
The court upheld the office's decision and ordered Handojo to pay Rp200 million (approximately $20,000) in damages for trademark infringement. This is the second highest amount of damages awarded by this court to date.
The case is noteworthy because the court allowed a counterclaim for trademark infringement to be heard in the same proceedings as the cancellation action. Counterclaims are rarely accepted by Indonesian courts and defendants in Edwards' position are normally required to file separate proceedings, which significantly increases the cost and time involved.
The case is now under appeal and is expected to be heard by the Supreme Court in the near future.
Brett McGuire, Rouse, Jakarta
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