AFFA Represents Neo Factory Co., Ltd. (Thailand) in the Invalidation of the D-Nee Trademark Registration in Indonesia

AFFA Represents Neo Factory Co., Ltd. (Thailand) in the Invalidation of the D-Nee Trademark Registration in Indonesia

Intellectual Property, TrademarkLeave a comment

In an increasingly competitive business landscape, a Trademark is not merely an identity—it is a strategic asset that determines trust, reputation, and business sustainability. However, in practice, not all business actors fully understand the importance of comprehensive Trademark protection from the outset.   A recent decision by the Supreme Court of the Republic of Indonesia, Number 1337 K/Pdt.Sus-HKI/2025 Jo. Number 125/Pdt.Sus-Merek/2024/PN.Niaga.Jkt.Pst, reaffirms this point and serves as an important reminder for businesses not to underestimate the legal aspects of Intellectual Property in Indonesia.   Case Chronology This case arose from the registration of a Trademark in Indonesia by a party whose mark bore substantial similarity to a trademark owned by a Thai trademark owner.   Below is the key timeline:   May 15, 1997 The original owner registered its Trademark in its home country (Thailand) for various Class 3 products such as soap, lotion, and personal care items.  Global Expansion (following years) The Trademark was subsequently registered and used in multiple countries, including China, Malaysia, Bahrain, Cambodia, Laos, the United Arab Emirates, and Vietnam.  December 19, 2018 A party in Indonesia filed a Trademark application with a name and appearance that were substantially similar.  December 4, 2020 The Trademark obtained protection in Indonesia after undergoing the examination process.    At this point, there was a gap of more than 21 years since the original registration by the rightful owner.   December 23, 2024 AFFA, acting as the Plaintiff, filed a lawsuit to invalidate the Trademark registration against the Defendant at the Commercial Court of the Central Jakarta District Court.  March 20, 2025 The Commercial Court at the Central Jakarta District Court issued an initial decision rejecting the claim of the original Trademark owner.  March 27, 2025 A cassation appeal was filed by the original Trademark owner to the Supreme Court.  April 9, 2025 The cassation memorandum was officially received by the court. December 17, 2025 The Supreme Court, at the cassation level, granted the cassation petition filed by AFFA.   In its considerations, the Supreme Court stated that: The Indonesian Trademark had substantial similarity to the original Trademark. The registration was made in bad faith. The act had the potential to create unfair competition and mislead consumers.   Based on these findings, the Supreme Court: Granted the cassation petition; Overturned the previous decision; Declared the Trademark registration in Indonesia invalid; and Ordered its removal from the general Trademark register.   This case highlights one crucial point: Trademark protection is a business strategy, not merely an administrative process. The more than two-decade delay in this case demonstrates that failure to secure rights in a particular country can open opportunities for other parties to take advantage.   At the same time, this decision provides reassurance that the Indonesian legal system continues to protect parties with strong grounds of use and established reputation.   Business actors should consider the following strategic measures: Secure Trademark protection early, including in target expansion countries. Conduct comprehensive clearance searches before filing a Trademark. Build and consistently document brand reputation. Be prepared to enforce rights in the event of infringement.   With the right approach, a Trademark becomes not only a business identity but also a solid foundation for long-term growth.   Proper guidance from the outset will help ensure that each protection step is carried out strategically, minimizing the risk of disputes and preserving business value.   Should you need further information regarding Trademark protection in Indonesia, feel free to contact us through the following channels and receive a FREE 15-minute consultation:   📩 E-Mail : [email protected] 📞 Book a Call : +62 21 83793812 💬 WhatsApp : +62 812 87000 889   About AFFA:  Established in 1999, AFFA Intellectual Property Rights is an Indonesia-based boutique IP law firm serving international brands and innovators, offering full-service support—from prosecution and licensing to enforcement and commercialization—in Indonesia’s dynamic IP landscape. Our firm is widely recognized for its excellence, with accolades including “Best Boutique Law Firm in Indonesia” and “IP Enforcement Firm” at the Indonesia Law Firm Awards 2025 by Asia Business Law Journal, as well as being listed as a “Recommended Firm 2024 — Indonesia” by WTR 1000: The World’s Leading Trademark Professionals. For more information, please visit: www.affa.co.id.

A-Comprehensive-Trademark-Registration-Guide-for-Indonesian-Companies-in-Thailand-affa

A Comprehensive Trademark Registration Guide for Indonesian Companies in Thailand

Intellectual Property

Thailand is a crucial partner for Indonesian businesses, with bilateral trade between the two nations exceeding $18 billion in 2020. As the second-largest economy in Southeast Asia, Thailand offers Indonesian companies access to a sizable consumer market of over 69 million people. Its strategic location within the ASEAN region provides a gateway for Indonesian exports, making Thailand a pivotal trade partner.   Moreover, Thailand’s investor-friendly policies have attracted over 600 Indonesian companies, highlighting its appeal as a destination for Indonesian investments. This economic synergy, along with trade agreements and a well-established infrastructure, underscores Thailand’s significance for Indonesian businesses aiming to expand their reach in Southeast Asia and beyond.   Why Register Your Trademark in Thailand? Registering a Trademark is one of the first things to be done to establish effective protection in Thailand or internationally. An unregistered sign, logo, or name will not receive the same rights and status as a registered mark. Since Thailand adopted a first-to-file Trademark system, a Trademark may be at risk of being taken by other competitors if not registered in time.   Trademark According to Trademark Act B.E. 2534 in Thailand A Trademark is a mark that identifies the origin of the goods or services and can be distinguished from other Trademark owners. The mark may be a name, drawing, logo, word, letter, combination of colors, or a combination of several of these elements.   A Trademark is a mark used for a product and it is an indication that the product with such a Trademark is different from products of other Trademarks. A Service Trademark is a mark used for a service and is an indication the service with such a service mark is different from services of other service marks. A Certificate Mark is a mark used by the owner to certify the origin, composition, method of production or characteristics of the goods or services of another person. A Collective Mark is a Trademark or service mark used by companies or enterprises of the same group or by members of an association, cooperative, union, state, or private organization.   Trademarks consisting of certain characteristics are forbidden under the Trademark Act. These characteristics include: Any mark contrary to public order, moral, or public policy; Marks that are identical to marks prescribed by Ministerial notifications; National flags or emblems of Thailand, royal standard flags, national flags and emblems of foreign states or international organizations; Royal names or monograms; or Marks that are similar to medals, diplomas, or certificates issued by the Thai government or Thai government agency.   How do you register a Trademark in Thailand? Trademarks are registered with the Department of Intellectual Property (DIP). Applicants must have a fixed address in Thailand. Non-residents can only register by appointing a legal representative with a fixed address in Thailand.   Filing an Application An application must be submitted to DIP. The registrar will notify the applicant or its representative of the result of the Trademark Examination within 12 to 18 months. If the application is deemed by the registrar to be registerable, the Trademark will be published for a 60-day period to make sure there is no third-party opposition. If the registrar deems the Trademark unregistrable, a rejection notification will be provided along with a reason for the basis of that rejection.   Trademark Application Timeline The entire process takes about 1 year from the date of filing to obtaining the certificate, presuming there is no office action or request for amendment of the application. However, the Trademark protection period begins on the days of submission of the application for 10 years and may be renewed.   Priority Claim A priority claim is when an application is filed for the first time in one country, and the applicant would like to retain a right of priority to the date of first filing applications for other countries. To claim priority, an application must be filed in Thailand within 6 months from the first foreign filing date (priority date).   Required Documents for Priority Claim The original certified copy of the foreign application (issued by the foreign Trademark Office); The statement asserts that the former application has not been abandoned or withdrawn (original required).    A priority claim application must be submitted in Thai language at the time of the filing. Late filing of these documents is possible upon request, and 60 days from the date of filing is allowed for late submission of documents.   Renewals A registered Trademark may be renewed. A request for renewal can be filed 3 months before the expiration date of that Trademark. Late renewal is possible within the 6 months from the expiration date. The late renewal period of 6 months is also known as the grace period, and a penalty of 20% of the official fees must be paid.   Fast-Track Applications Thailand Department of Intellectual Property introduced a new fast-track system for Trademark renewals and registration while the official fees remain the same. Fast-Track Renewal can be shortened from 60 days to 60 minutes, applicable for renewal requests for Trademarks of no more than 30 items of goods and services, and under the condition that there are no changes to those items. For Fast-Track Registration, the Trademark Examination period can be shortened from around 12 months to around 6 months. Two conditions must be fulfilled to accelerate Trademark examination under this system: The application is filed for no more than 10 items of goods and services and the items must be obtained from DIP’s list.  The application must not be amended after filing.   Trademark Assignment Assigning or inheriting a Trademark must be registered with the registrar of the DIP. It may be an assignment of a Trademark Application or a Registered Trademark, or an assignment of specific classes or items.   Required Documents for Trademark Assignment Copy of the assignor and assignee’s national ID card or other ID card issued by a governmental agency. Copy of the assignor and assignee’s passport in case of a…