A recent decision casts doubt over the general consensus view on establishing a claim of bad faith in trademark cancellation proceedings.
In past posts we have written about commonly accepted ways of establishing a claim of bad faith before the Courts (see here and here), which are:
- where evidence shows some form of breach of trust;
- where the subject mark is similar to a well-known mark; and/or
- where the subject mark is used in a confusingly similar manner.
In Akan Enterprise Group (Sanghai) Co., Ltd. and PT. Sumbermetal International v. PT. Prima Karya Agung (35/Pdt.Sus-Merek/2013/PN. Niaga.Jkt.Pst), evidence showed the First Plaintiff and Defendant entered into a contract for the supply of pipes. The Jakarta Commercial Court found that because the agreement was not exclusive in nature, the Plaintiffs had failed to establish to the satisfaction of the Court that there was an act of bad faith.
An alternative view - and one consistent with the general consensus - would have been that the supply agreement was sufficient to demonstrate a special relationship between the parties, from which it could be inferred that the Plaintiff was aware of the Plaintiffs’ trademark rights. That therefore filing of the application was a breach of trust and an act of bad faith.
This first-instance Commercial Court decision is not binding on future cases (there is no doctrine of precedent in Indonesia), but is concerning because it introduces yet another element of unpredictability in prosecuting trademark cancellation proceedings.