On April 25 2024, the Panel of Judges at the Central Jakarta District Court issued a favourable decision for Inner Mongolia Kunming Cigarette Limited Liability Company to invalidate the “DONGCHONGXIACAO” Trademark under registration number IDM000791780 which had been registered in bad faith since May 2018 in Indonesia.
“DONGCHONGXIACAO” is a Trademark that has been registered and made famous by Inner Mongolia Kunming Cigarette Limited Liability Company (hereinafter referred to as the “company”) in China since 2017, as well as in several other countries including Pakistan, Brazil, Saudi Arabia, Qatar, and the United Kingdom. In 2021, the company decided to apply for Trademark registration with application number DID2021069519 in Indonesia. However, the application was rejected by Trademark Office (DGIP) in 2022 on the grounds that there were substantial similarities with the prior Trademark “DONGCHONGXIACAO” which was registered with number IDM000791780 in the same class, namely class 34.
In response to this rejection, Inner Mongolia Kunming Cigarette Limited Liability Company, which appointed AFFA Intellectual Property Rights, decided to file an act for invalidation of this Trademark. This is done considering that the company believed that the prior Mark “DONGCHONGXIACAO” with registration number IDM000791780 was applied for and registered by a party who did not have the rights to the Trademark nor any legitimate reason to own it, considering that the company has earlier registrations of the same Trademark in other countries which were submitted before the date of the Trademark application of the prior Mark.
Apart from being registered and marketed in various countries around the world, the arguments in this action were based on the following 4 (four) points::
- Similarities in visual elements
| Notes | Plaintiff’s Trademark | Defendant’s Trademark |
| Similarities in Words DONG CHONG XIA CAO |
 |
DONGCHONGXIACAO |
| Similarities in Writing | Dong Chong Xia Cao | DONGCHONGXIACAO |
| Similarities in Word Order | D-o-n-g-C-h-o-n-g-X-i-a-C-a-o | D-O-N-G-C-H-O-N-G-X-I-A-C-A-O |
| Conclusion | The Defendant’s Trademark can create an impression that confuses the public, so the Trademark market can think that the Trademark is the Client’s Mark. | |
- Similarities in pronunciation
| Notes | Plaintiff’s Trademark | Defendant’s Trademark |
| Similarities in essence in Trademark Pronunciation | dong-chong-xia-cao | dong-chong-xia-cao |
- Similarities in the goods covered in Class 34
They have similarities and close relationships, starting from the function, intended use, and origin of the goods, as well as similarities in marketing channels/target markets, so it is feared that they have the potential to confuse consumers.
| Plaintiff’s Trademark | Defendant’s Trademark |
| DONGCHONGXIACAO | |
| Application Number DID2023116953 – Class 34 | Registered Number IDM000791780 – Class 34 |
| Type of Goods:
“Tobacco powder; shredded tobacco; cigar; small cigars; cigarette; electronic cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; tobacco; chewing tobacco; tobacco to snort.” |
Type of Goods: “Tobacco and processed tobacco products, including smoking tobacco, tobacco pipes, cigars and cigarettes, smokers’ goods, including smoking pipes and lighters, electronic cigarettes, non-metal cigarette ash containers, cigarette boxes, gas cylinders for cigar lighters, cigarillos (small cigars), tobacco for self-rolling cigarettes, chewing tobacco, snuff tobacco, kretek, betel tobacco, heated tobacco products, devices electronics and parts thereof for heating cigarettes or tobacco to release nicotine-containing aerosols for inhalation, liquid nicotine solutions for use in electronic cigarettes, cigarette paper, cigarette tubes, cigarette filters, tobacco containers, pouch equipment for rolling cigarettes.” |
The trademark invalidation action that was officially filed was registered on December 18, 2024, at the Registrar’s Office of the Commercial Court at the Central Jakarta District Court, with the Trademark Office/Directorate General of Intellectual Property (DGIP) was also included as a co-defendant. Through a series of hearings,, the Panel of Judges at the Commercial Court at the Central Jakarta District Court finally issued a favourable decision for the plaintiff. The decision was based on the following considerations:
- “The owner of an unregistered Trademark can file an action as intended in paragraph (1) after submitting an Application to the Minister,” as regulated in Article 76 paragraph (2) of Law Number 20 of 2016 concerning Marks and Geographical Indications (Trademark Law) and the Plaintiff has done this prior to the submission of the suit to the Court of Commerce.
- The Trademark Invalidation Action has been appropriately and properly filed through the Commercial Court at the Central Jakarta District Court, as regulated in Article 85 paragraph (2) of the Trademark Law;
- The Panel of Judges has carefully examined that the Defendant’s Trademark is substantially similar to the Client’s Trademark, which was previously registered in China on 28 August 2017. Both the sound of the speech, the arrangement of the letters, and the words used in the word DONGCHONGXIACAO Trademarks, according to the panel of judges, have very close similarities, so it is appropriate that the type of goods owned by the Plaintiff’s mark and the Defendant’s mark can be considered as a Trademark which is substantially similar in the type of goods applied for and also registered;
- Defendant should not use and/or apply for registration of a Trademark which is similar in essence to Plaintiff’s Trademark because there are many other words or arrangements of words that the Defendant can create and use as a Trademark without having to imitate and/or plagiarize the Plaintiff’s Trademark;
- The application for registration of the Trademark submitted by the Defendant is not an application that can be registered as intended in Article 21 paragraph 3 of the Trademark Law, or other words, the application for registration of the DONGCHONGXIACAO Trademark should be rejected by the Co-Defendant (DGIP) because the Trademark registered by the Defendant is the result of imitation and/or plagiarism of the Plaintiff’s Trademark which already existed and was previously registered in China;
- Defendant never appeared at the trial, even though they had been summoned legally and properly; this also proves that the Defendant did not refute the Plaintiff’s arguments, which were that the registered Trademark was substantially similar to the Plaintiff’s mark, which had previously existed and was registered earlier in China, and that the Defendant registered the Trademark in bad faith.
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The success of the Trademark invalidation action at the Central Jakarta District Court’s Commercial Court is evidence of AFFA’s foresight as an Intellectual Property Consultant in providing the best service in managing Trademarks.
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