Kopitiam wars in Indonesia - another battlefront

In a continuation of the longstanding Indonesian KOPITIAM wars, (background here) a new case between Phiko Leo Putra operator of Lau's Kopitiam cafe and Abdul Alex Soelystio has been decided in the Supreme Court. Abdul has secured dozens of trademark registrations in many classes for KOPITIAM which is a Chinese translation of coffee shop, previously a generic term across South East Asia including Indonesia.

Hundreds, if not thousands of KOPITIAM cafes exist however. Abdul has been winning cases and is taking enforcement action against the many users of KOPITIAM throughout Indonesia.  In another case, he forced the cancellation of Paiman Halim's KOPITIAM trade mark registration in class 43.

In the current case, Phiko had applied for LAU'S KOPITIAM in Class 43 for cafes and restaurants in September 2013. Phiko claimed that Abdul's registration for KOPITIAM should be cancelled because it is in the public domain. Phiko argued KOPITIAM is a combination of two descriptive words, KOPI ('Coffee' in Indonesian language) and TIAM ('Shop' in Chinese Hokkien dialect). He argued it is widely used for coffee shops especially by the Chinese immigrant community.

The Defendant Abdul claimed that the LAU'S KOPITIAM application is similar to his KOPITIAM trade mark registration. He requested the court to order the Plaintiff to stop his business and pay damage for Abdul's losses.

The Panel of Judges at the Jakarta Commercial Court rejected the Plaintiff's lawsuit. However they also decided that Lau's Kopitiam mark has significant differences to the Defendant's KOPITIAM mark so was not similar.

On appeal in the Supreme Court, the Judges overruled parts of the Commercial Court decision. They confirmed the two marks were in fact similar and that there was infringement and Phiko had to cease use of his Lau's Kopitiam trademark.

The decision is probably right in respect of the similarity. But it does not address the descriptive generic issue, which is also ongoing in another case brought by the Kopitiam Owners  Association. Meanwhile Abdul keeps asserting and winning cases, in his attempt to monopolize an entire industry.

 

Indonesia KOPITIAM dispute - trademark or generic term

Many common words can attain trademark status if they acquire a secondary meaning denoting origin from a particular source. In South East Asian countries Kopitiam is a generic word meaning a Chinese coffee shop. It comes from the Peranakan Chinese overseas Chinese who migrated to Singapore, Malaysia and Indonesia. Its origins are the bahasa word for coffee, kopi and the Chinese hokkien word tiam, for shop or stall. They can be found across the region - see picture.

One Indonesian businessman, Abdul Soelystio owns a Jakarta-based “Kopitiam” shop and has sought to register the name as his own brand in 1996. He then filed a lawsuit against a Medan-based business called “Kok Tong Kopitiam” for trying to register a mark including kopitiam. He won in the Medan District Court. Paimin Halim, the owner of “Kok Tong Kopitiam”, appealed to the Supreme Court last year but lost. Now, Abdul Soelystio has taken out national advertisements to warn other restaurant owners to immediately drop kopitiam from their names.

There is even a Kopitiam Association and its chairman Mulyadi Praminta has said the court rulings are ridiculous. So has Bondan Winarno, the owner of the “Kopitiam Oey” chain. In Singapore, the name is generic.

The problem in this case stems from a problematic District Court decision in Medan; in Indonesia it is often hard to raise defences, because of a bifurcated system. The defendant needed to file a cancellation action to revoke the mark as generic. Maybe now other major business owners or the association should do so.

Kopitiam trademark dispute goes to court

Here is an earlier post about how a local businessman who is well known for aggressive trademark practices is seeking to monopolize a potentially generic term Kopitiam, the Peranakan (Straits) Chinese name for Chinese coffee shops.

As expected, the Kopitiam Association of Indonesia has filed for cancellation of 3 of the 22 brands including the word Kopitiam filed at the IPO by Abdul Soelistio. The balance are presumably 19 unused marks in different classes unrelated to coffee shops (his usual registration strategy). Some of the 3 include logos. "'Kopitiam' does not exist as a brand at all," said the plaintiff's attorney Yan Apul, last week.  In addition, the word 'Kopi' and 'Tiam' is considered public property or generic, he indicated. Kopi means coffee and Tiam means stall.

IP Komodo expects a difficult fight, as Abdul has a number of his own coffee shops and has been asserting his mark. He even has a Supreme Court decision against a shop in Medan on his side. However the association  also represents many kopitiam shop owners so cannot afford to lose.

The KOPITIAM fight escalates

The coffee wars reported here over the KOPITIAM name, the generic name for popular Chinese coffee houses in Indonesia and neighboring countries continue. Local businessman and Abdul Alex Soelistiyo has registered, claims exclusivity in and has brought enforcement against other users of his registered KOPITIAM mark in Indonesia. He can do this due to the weak examination systems at the TM office allowing a well known generic name to be registered.

 

Now Alex has put an advert in the newspapers warning members of the Indonesian Kopitiam Association that they must remove their signs and stop using 'his trademark'.

 

Meanwhile members of the association are well into a cancellation case in the Central Jakarta District Court filed on June 1, 2012. There is precedent for this as other generic marks have been cancelled in the past - JELLY BEAN was one. The case is now at evidence stage, with witnesses for the association claiming Kopitiam is used in many countries, including Indonesia, Singapore, Malaysia, Hong Kong, and Macao. In Indonesia itself, in many supermarkets in Indonesia there are Kopitiam shops, in famous Jakarta shopping malls like Grand Indonesia, Plaza Indonesia and Mal Taman Angrek.

 

Expect a decision in a few weeks; then the inevitable Supreme Court appeal.

Coffee dispute is left unresolved

The Kopitiam Employers Association of Indonesia (PPKTI) has been disappointed in its litigation against the KOPITIAM trademark owned by Abdul Alex Soelystio. See here for background. The Central Jakarta Commercial Court decided that the PPKTI has no legal standing as an interested party. They found against PPKTI on an obscure technicality that it could not properly prove its status as a legal entity because it's deed of establishment had not received a proper approval from the Ministry of Justice.

This means that the Plaintiff's claim was not accepted and as such no substantive decision was made on the merits of the case. This not only did PPKTI not have any hearing of its substantive case, but so too Abdul Alex's counterclaim was not decided. It means that the case can be refiled later. Although perhaps PPKTI will appeal.

This is decision is a shame. The judges focused on an irrelevant procedural technicality as opposed to the substantive trademark issues. How the precise legal structure of the Plaintiff's establishment can have any bearing on the descriptiveness of another's trademark is a mystery! In fact this type of decision is a poorly kept secret code. For whatever spurious reason the court clearly wanted to favor Abdul Alex, but they do so by finding for him on a technicality. So they don't actually prohibit the Plaintiff from reapplying later on, presumably after correcting the error.