Indonesian cigarette trade mark infringement dispute burns out
The Supreme Court has put to rest a lengthy dispute over one of the most well-known Indonesian cigarette brands. GUDANG GARAM is one of the most famous clove cigarette brands, an icon of its producer, now a huge public listed company Gudang Garam Tbk.
PR Jaya Makmur manufactured and sold its own clove cigarettes using the GUDANG BARU trade mark for several decades. They appeared in a pack similar to Gudang Garam Tbk's flagship product. PR Jaya Makmur's owner Ali Khosin has 2 registrations for pack designs from 2005 but these differed slightly from how he used the mark - his actual packs appeared much closer to Gudang Garam Tbk's. In December 2010 and March 2011, he received warning letters from PT Gudang Garam Tbk concerning the use of similar trade marks and logos.
Litigation over the trade mark started some years ago. In 2014, the Supreme Court rejected the appeal filed by Gudang Garam Tbk to cancel the GUDANG BARU marks, citing no similarity. However, these were pack label designs, incorporating multiple elements, not just the words, rather than the actual packs he sold.
So Gudang Garam Tbk filed a criminal complaint. The Prosecutor claimed that similarities in the shape, placement, and colour compositions, with only differences in how it is pronounced made this a criminal counterfeiting case. This led to a criminal trial and the first instance Kepanjen District criminal court and the Surabaya Court of Appeal decided to sentence Ali Khosin to 10 months imprisonment and a IDR 50,000,000 (USD3,800 fine for trade mark infringement. Khosin filed a petition for reconsideration at the Supreme Court.
The Supreme Court upheld the appeal. Much of the appeal was on technicalities, whether the case qualified for a reconsideration appeal at all. However, a dissenting opinion by of the Justices, Dr. H. Suhadi, S.H., M.H., was that the Accused's reconsideration appeal should be granted. Overall it looks like the right decision against a clear infringer on the merits however.