Client’s Victory: The Court of Commerce Invalidates “Deli Waffle” Trademark Registration
In a significant development for Intellectual Property rights protection in Indonesia, AFFA Intellectual Property Rights has officially submitted a request to the Directorate General of Intellectual Property (DGIP) on 11 September 2025 to implement a landmark court decision by recording the invalidation of the “Deli Waffle + Logo” Trademark (No. IDM001120480) owned by ICEN LESTARI. This follows a ruling issued on 10 July 2025 by the Commercial Court at the Central Jakarta District Court (Case No. 22/Pdt.Sus-Merek/2025/PN.NIAGA.JKT.PST), which fully granted a Trademark bad-faithi invalidation filed by Singapore-based PRIMA LIMITED—represented by AFFA—against ICEN LESTARI. The decision, which attained permanent legal force on 8 September 2025, affirms the principle of good faith in Trademark registration and reinforces Indonesia’s commitment to international brand protection. Background of the Dispute PRIMA LIMITED, a company established under Singaporean law, has actively developed and promoted its “Deli Waffle” products globally. The company has secured Trademark registrations for “Deli Waffle” in various jurisdictions, including Singapore (registered in 2020), Australia (registered in 2022), and China (registered in 2023). In Indonesia, PRIMA LIMITED had also initiated Trademark applications for “Deli Waffle + Logo” in 2022 and 2025. The core of the dispute arose when PRIMA LIMITED discovered that ICEN LESTARI had registered a highly similar “Deli Waffle + Logo” Trademark (No. IDM001120480) in Indonesia, with a filing date of November 2022. This action prompted PRIMA LIMITED to file a Trademark invalidation lawsuit on 5 March 2025. Key Arguments and Court’s Findings PRIMA LIMITED contended that ICEN LESTARI’s Trademark registration exhibited fundamental similarities in its principal and overall elements, including visual appearance, phonetics, and the type of goods/services protected, with PRIMA LIMITED’s existing “Deli Waffle” mark. More critically, PRIMA LIMITED argued that ICEN LESTARI’s registration was undertaken in bad faith, with the intention to imitate or plagiarize a well-known mark. The plaintiff presented evidence of its extensive marketing efforts, including brochures and online presence, indicating its prior and widespread use of the “Deli Waffle” mark, including in Indonesia. The Commercial Court’s deliberations extensively covered these points. Applying provisions from Law No. 20 of 2016 concerning Trademarks and Geographical Indications (Trademark Law), the Court concluded that there was indeed a fundamental similarity between the two marks. The Court highlighted that the similarity was evident in the word “Deli Waffle,” its spelling, and the accompanying logo, leading to potential consumer confusion and unfair competition. Crucially, the Court found conclusive evidence of bad faith on the part of ICEN LESTARI. The ruling explicitly stated that the defendant’s actions were intended to mimic or plagiarize the plaintiff’s mark, thereby exploiting the reputation and market presence built by PRIMA LIMITED. The Court referenced Article 21 (3) of the UU Merek, which stipulates that Trademark applications filed in bad faith shall be rejected. The Court also upheld the principles of Article 21 (1) (a), which dictates that a Trademark should be rejected if it bears fundamental or overall similarity to an earlier-registered mark owned by another party for similar goods or services. The Court’s Verdict Based on these findings, the Commercial Court at the Central Jakarta District Court issued the following decisive orders on 10 July 2025: Granting the Plaintiff’s lawsuit in its entirety. Declaring PRIMA LIMITED as the legitimate owner of the “Deli Waffle + Logo” Trademark. Declaring the Defendant’s “Deli Waffle + Logo” Trademark (No. IDM001120480) to be fundamentally similar to the Plaintiff’s mark. Declaring that the Defendant’s Trademark registration (No. IDM001120480) was conducted in bad faith. Invalidating the registration of the Defendant’s “Deli Waffle + Logo” Trademark (No. IDM001120480) from the General Register of Trademarks, along with all its legal consequences. Ordering the Directorate General of Intellectual Property (DGIP) to record this invalidation and publicize it in the Official Trademark Gazette. Ordering the Defendant to pay the court costs amounting to IDR 1,120,000.00. Significance for IP Protection in Indonesia This ruling serves as a powerful deterrent against Trademark squatting and bad-faith registrations in Indonesia. It underscores the importance of conducting proper due diligence and registering Trademarks in good faith. For international companies like PRIMA LIMITED, this decision provides significant assurance that their intellectual property rights will be recognized and protected under Indonesian law, even against attempts to exploit their brand’s reputation. AFFA Intellectual Property Rights is proud to have represented PRIMA LIMITED in securing this vital victory, reaffirming our commitment to defending our clients’ innovations and brands in the complex landscape of intellectual property law. For more information regarding IP protection in Indonesia, please contact us through the following channels: ? E-Mail : [email protected] ? Book a Call : +62 21 83793812 ? WhatsApp : +62 812 87000 889
