The case is a lawsuit regarding registration trademark cancelation which is filed by Las Vegas Sands Corp. (Plaintiff) against PT. Agung Wahana Indonesia (Defendant)
Summary of the Facts
The Defendant is the owner of registered trademark in Indonesia named SANDS INTERNATIONAL EXECUTIVE CLUB in class 41, which was filed to registration on 12 November 2004.
The Plaintiff claimed as the first owner and user of the trademark SANDS in Class 41 and claimed the trademark as a well known mark since 1952 in United Stated of America and then the Plaintiff has expand the mark to several countries. The Plaintfiff’s trademark also registered in Indonesian Directorate General of Intellectual Property. (DGIP), which was filed on 17 February 2008.
The Plaintiff claimed that the Defendant has a bad faith in duplicating and counterfeitting the SANDS trademark and filed a suit to the Court of Commerce in Indonesia to stated a cancellation to the Defendant’s mark.
The main issues are determined as follow:
(1) Whether the trademark SANDS owned by the Plaintiff is an internationally famous and well known trademark.
- Whether the trademark SANDS satisfy the criteria of the knowledge in the relevant sector of the public.
- Whether the reputation of the mark SANDS as well known mark obtained as a result of promotion of the trademark
- Whether the Plaintiff as the owner of trademark SANDS is registered in several countries and establish investment in registration countries.
(2) Whether the trademark SANDS owned by the Plaintiff is a well-known mark in the public of Indonesia and whether it is a registered trademark in Directorate General of Intellectual Property of Indonesia (DGIP).
(3) Whether the trademarks of Defendant, “SANDS INTERNATIONAL EXECUTIVE CLUB”, which has been registered in DGIP, consist substantial similarity or identical with the trademark of the Plaintiff SANDS
Summary of Court Decision
The Court relied to the Explanation of Article 6 Par.(1) b of the Indonesian Law of Mark that give a guidelines to determine whether a mark is a famous and well-known, account shall be taken of the knowledge of the trademark in the relevant sector of the public, reputation of the trademark that obtained as a result of a massive promotion, the investment and the registration of the trademark in several countries.
- The knowledge of trademark in the relevant sector of the public.
The court construed that the extent of public recognition of the trademark shall be considered to determine whether a mark is well-known. And the product/service use of the trademark is indicates the public recognition itself.
The court considered the evidences of the long term use of the trademark SANDS since 1952 in US on hotel and gaming sector and the reputation of the hotel which has been Hollywood celebrities choice to visit and stay and also have been a location of film shooting. The Court also considered the business expansion that established by the Plaintiff in several Countries, namely Macao China and Singapore.
Considered the evidences presented by the Plaintiff above, the Court stated the trademark SANDS has satisfied the knowledge of the relevant sector of the public in the countries where the Plaintiff has established its business.
- The reputation of the mark SANDS as well known mark obtained as a result of promotion of the trademark
The Court stated that the trademark SANDS owned by the Plaintiff has obtained a significant reputation in entertainment sector as result of a massive promotion of the trademark in the countries where trademark SANDS is used by the Plaintiff to establish its business.
The Court considered the evidences produced by the Plaintiff, which is showed the properties owned by the Plaintiff in US, Macao and Singapore, the TV shows where at CNBC Asia in 2008 and the evidences of the first hotel SANDS in US.
- Investment and Registration of the trademark in several countries
The Court also stated that the trademark SANDS owned by the Plaintiff satisfied the criteria of well-known mark with the evidences of investment of the trademark where the Plaintiff has built SANDS EXPO in Macao and MARINA BAY SANDS in Singapore. Furthermore the Court also considered the registrations of trademark SANDS in several countries such as, China, Hongkong, Philippines, South Korea, Vietnam, Swiss and etc.
Contrary to the first judgement, the Court construed the existence of an internationally well-known mark not always mean the trademark is a well-known mark in a Country. In this matter, the Court found that the trademark SANDS is not a well-known mark in Indonesia simply because the Plaintiff has failed to presented appropriate evidences of its business activities or investment in Indonesia with the use of SANDS trademark name. Furthermore the Court also considered that the plaintiff could not present the evidence of massive promotion of SANDS trademark in Indonesia.
In short, the Court stated the SANDS trademark did not satisfy a well known mark criteria in Indonesia.
The Court considered the evidence presented by the Defendant that “SANDS INTERNATIONAL EXECUTIVE CLUB” trademark is a registered trademark in DGIP, which is filed by the Defendant on 12 November 2004. The Court also compared the fact of filing date of trademark between the Plaintiff and the defendant where the SANDS mark owned by Plaintiff was filed on 17 February 2008.
Considering the fact of the both marks filing date, the Court relied the judgement based on the Article 6 Par. (1) a, that implied the principle of “first to file” system in mark registration. On the other hands, the Court assessed the Plaintiff has failed to present the evidences that could indicate SANDS mark as a well-known mark in Indonesia.
The Court stated that the Defendant’s mark is the first registered trademark in DGIP and have no substantial similarity or identical with SANDS trademark of the Plaintiff. Therefore the Court stated that the Plaintiff’s claim to cancel the Defendant’s mark could not be accepted.
The present case showed how difficult to determine a mark as a famous and well-known mark. A mark could be famous in some countries but it might be rarely heard by public in another country. Especially if the goods or service of the mark is never existed in the public of a Country itself. However, the Court should be take account of the relevant factors that may determine the mark’s geographical reach locally, regionally, and world wide as legal reasoning in its judgement.
Explanation of Article 6 Par.1 (b) stated that “the Court might be appoint an independence institute to run a survey to determine whether a mark is a well known mark”. This provision should be considered by the court to reach a comprehensive and fair judgement. Unfortunately, this guidelines is ignored by the Court.