Thursday, April 28, 2016
The legs of a Man causes problems in Indonesia
Singapore health drink maker Wen Ken Drug Co. Pte. Ltd is in trouble over a law suit in Indonesia. It makes Cap Kaki Tiga (Three Legs Brand) drinks, an old Singapore brand, popular in Indonesia. However the Central Jakarta Commercial Court found it nearly identical to the flag of British dependent territory Isle of Man. A British citizen Russel Vince applied to cancel the mark on the basis that it was filed in bad faith and an unauthorized use of a state symbol. The Plaintiff also requested the Court to ban production, distribution, and promotion, as well as to recall from market all drinks that bear the logo.
The Defendant argued that the Plaintiff had no legal standing, with no authority to represent The Isle of Man and no legal interest such as trademarks in Indonesia.
The Court granted parts of the Plaintiff's claim. The Panel of Judges declared that the Defendant's 49 trade mark registrations of CAP KAKI TIGA were filed in bad faith because it is similar to the flag of the Isle of Man. The Panel of Judges ordered the cancellation of the registrations but rejected the order to cease use of the mark.
The Defendant appealed to the Supreme Court twice but was rejected. They argued that the Plaintiff's claim does not fit the criteria of Article 6.3 of the Trade Mark Law because the Isle of Man is not a sovereign state and not a member of the WTO or UN. The argument was not accepted.
There are several legal problems here - this was a cancellation action, so difficult for the Plaintiff to include infringement remedies - no wonder he failed on that part. It is not exactly clear who he is, and why the court didn’t investigate his standing further. Article 6.3 protects states or institutions. While the Isle of Man is not a state per se it is a part of one (along with many other British dependencies). Presumably Indonesia wouldn't want to start a battle on that front. However that wasn’t raised in the lower courts by the Defendant so was correctly refused as not new evidence on appeal.
The decision overall seems right - essentially national symbols will always trump privately owned IP. The Defendant will need to rebrand, which should be simple as there are other ways to show three legs.