Sunday, April 10, 2016
Sheraton successfully enforces its St Regis brand in Indonesia
The Sheraton and Starwood Hotels groups have canceled Staywell Hospitality Group's trade mark registrations for PARK REGIS class 35 and 43. The Central Jakarta Commercial Court's Panel of Judges granted the Plaintiffs claim completely on the basis that their ST. REGIS trade mark is a well-known mark widely registered and used around the world and in Indonesia. Similarity was determined on the basis of use of the same dominant element REGIS. The Panel of Judges deemed that PARK is a more generic term that often used in hotel names. They also said that the Defendant filed PARK REGIS in bad faith, especially since it is used in the same industry.
A second case against REGIS @ THE PEAK AT SUDIRMAN in class 36 was also granted by the Supreme Court in an appeal from a trade mark cancellation case against PT Graha Tunas Mekar. Previously, Sheraton and Starwood lost at the Central Jakarta Commercial Court because the court found that the Defendant's trade mark is not similar in terms of sound, configuration, colour, and number of letters. The Plaintiffs argued on appeal that the term REGIS is a dominant element since it is placed at the front. Moreover, the Defendant's trade mark also does not have any distinguishing elements as the term PEAK and SUDIRMAN are location references. The Plaintiff claimed that the Defendant registered the trade mark using that dominant element REGIS in bad faith to take advantage of the Plaintiff's popularity. The Supreme Court's decision to grant the Plaintiff's appeal overturns the Central Jakarta Commercial Court's decision.