New battlefront opens in KOPITIAM wars
In the longstanding wars over the KOPITIAM mark, a new case between Phiko Leo Putra, the operator of the Lau's Kopitiam café, and defendant Abdul Alex Soelystio has been decided in the Supreme Court.
Abdul owns dozens of trademark registrations in many classes for KOPITIAM, which means ‘coffee shop’, and was previously a generic term across South East Asia, including Indonesia. However, hundreds, if not thousands, of Kopitiam cafés exist. Abdul has been winning cases and is taking enforcement action against the many users of the KOPITIAM mark throughout Indonesia. In another case, he forced the cancellation of a trademark registration for KOPITIAM in Class 43 of the Nice Classification.
In the present case, Phiko had applied for registration of the mark LAU'S KOPITIAM in Class 43 for cafés and restaurants in September 2013. Phiko claimed that Abdul's registration for KOPITIAM should be cancelled because it was in the public domain. Phiko argued that KOPITIAM is a combination of two descriptive words, ‘kopi’ ('coffee' in Indonesian language) and ‘tiam’ ('shop' in Chinese Hokkien dialect). He argued that the term is widely used for coffee shops, especially by the Chinese immigrant community.
The defendant claimed that the application for LAU'S KOPITIAM was similar to his trademark registration for KOPITIAM. He requested that the court order the plaintiff to stop his business and pay damage for the defendant's losses.
The panel of judges at the Jakarta Commercial Court rejected the plaintiff's lawsuit. The court decided that the LAU'S KOPITIAM mark had significant differences from the defendant's KOPITIAM mark, so the marks were not similar.
On appeal to the Supreme Court, the judges overruled parts of the Commercial Court’s decision, holding that:
the two marks were in fact similar;
there was infringement; and
Phiko had to cease use of his LAU'S KOPITIAM trademark.
The decision is probably right in respect of the similarity of the marks. However, it does not address the descriptiveness/genericness issue, which is ongoing in another case brought by the Kopitiam Owners Association. Meanwhile, Abdul keeps asserting and winning cases, in his attempt to monopolise an entire industry.
Nick Redfearn, Rouse, Indonesia
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10