Davidoff obtains deletion of local DAVIDOFF mark
In Reemtsma Cigarettenfabriken GmbH v NV Sumatra Tobacco Trading Company (013.K/N/HAKI/2003), the Supreme Court has overturned a Commercial Court decision and ordered the deletion of Sumatra Tobacco's DAVIDOFF trademark for cigarettes.
Reemtsma Cigarettenfabriken GmbH is a German licensee of Swiss company Davidoff Cie SA, the owner of the DAVIDOFF mark for tobacco products, among other things. Pursuant to Article 63 of the Indonesian Trademark Law, Reemtsma appeared on behalf of Davidoff in an action to have Sumatra Tobacco's registration of the DAVIDOFF mark deleted.
In two separate rulings, the Commercial District Court refused to delete Sumatra Tobacco's mark, rejecting Reemtsma's claim that Sumatra Tobacco had fraudulently purchased the DAVIDOFF trademark.
On appeal, the Supreme Court reversed the decision. It found that:
- Reemtsma provided evidence that the Swiss company's DAVIDOFF mark is well known worldwide;
- Sumatra Tobacco's DAVIDOFF trademark misled consumers as to the origin of the products; and
- Sumatra Tobacco's claim that its mark is well known in Indonesia was contradicted by (i) the fact that it only sells its DAVIDOFF cigarettes across three provinces and not the whole country, and (ii) a survey conducted in 10 wholesale shops in Jakarta and Medan, the capital of the North Sumatra province where Sumatra Tobacco is based, which showed that Sumatra Tobacco's DAVIDOFF cigarettes were not known there.
Sumatra Tobacco has appealed.
For background information on the case, see Local company retains DAVIDOFF mark despite minimal use.
Selly Sitanggang and Kristian Sirait, Amroos & Partners, Jakarta
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