Local company retains DAVIDOFF mark despite minimal use

Indonesia

In Reemtsma Cigarettenfabriken GmbH v NV Sumatra Tobacco Trading Company (54/Merek/2002/PN), Davidoff Cie SA has lost its fight to have an Indonesian company's registration of DAVIDOFF deleted. The court found that although the local company had produced just 150 branded cigarettes, the mark could not be deleted on the grounds of non-use.

Reemtsma is a German licensee of Swiss company Davidoff. 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.

Reemtsma argued that Sumatra Tobacco has never made bona fide use of the DAVIDOFF mark in the normal course of trade. The mark should therefore be deleted for non-use.

Sumatra Tobacco responded by arguing that (i) it is the legitimate owner of the DAVIDOFF mark in Indonesia, and (ii) it had produced DAVIDOFF marked tobacco products, admitting however that this production was minimal. In fact, it was able to prove that it had produced just 150 cigarettes.

The court ruled in favour of Sumatra Tobacco. It found that although the company's use of the mark was minimal, it had nevertheless been used.

Reemtsma, on behalf of Davidoff, has appealed to the Supreme Court.

James B Lumenta and Selly Sitanggang, Amroos & Partners, Jakarta

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