Thermaltake Technology Co., Ltd.
Case Study Title:
Obstacles to Obtaining Trademark Rights in Indonesia
Background: Thermaltake Technology Co., Ltd. (hereafter referred to as the “Manufacturer”) is a Taiwanese company specializing in the design of PC cases, power supplies, cooling devices, and peripherals. Headquartered in Taipei, Taiwan, the Manufacturer was established in 1999 and operates several manufacturing facilities in mainland China, including a significant plant in Dongguan. The Manufacturer also maintains offices across Asia, the United States, Europe, China, Australia, and Russia.
In early 2006, PT. Gerak Puncak Lancar (the “Distributor”), an Indonesian company, expressed its intent to purchase approximately one million units of the Manufacturer’s products. However, prior to placing any orders, the Distributor filed for the trademark “Thermaltake Cool All Your Life” with the Indonesian Intellectual Property Office (DGIP) on August 13, 2004, under its name. This trademark had already been registered by the Manufacturer in several other countries, qualifying it as a “well-known trademark.”
On May 30, 2006, the Manufacturer tried to register the trademark “Thermaltake Cool All Your Life + Device” with the DGIP but faced refusal due to the Distributor's prior application for the same trademark.
Since then, the Manufacturer has made several attempts to negotiate the transfer of the trademark rights in Indonesia back to itself, but these negotiations have repeatedly failed.
Challenge: The Manufacturer's primary challenge was to reclaim its trademark rights in Indonesia. After prolonged unsuccessful negotiations, on May 19, 2011, the Manufacturer engaged a seasoned Indonesian intellectual property law firm to initiate a lawsuit in the Commercial Court seeking cancellation of the trademark registered in the Distributor's name.
During the court proceedings, the Distributor presented a letter proposing to transfer the trademark, contingent upon the Manufacturer withdrawing the lawsuit. After the lawsuit was withdrawn, the Distributor unfortunately did not finalize the transfer agreement. Consequently, the court proceedings concluded without the Manufacturer being able to cancel the trademark registered under the Distributor's name.
Solution: Determined to regain its trademark rights in Indonesia, the Manufacturer appointed Inventis Patent Attorneys (“Inventis”) in November 2013 to file a new lawsuit in the Commercial Court aimed at cancelling the trademark “Thermaltake Cool All Your Life + Device” held by the Distributor. While this case was pending, the Distributor revealed that it had filed an assignment application to the DGIP through a different IP law firm to transfer the trademark rights to the Manufacturer, requesting the Manufacturer to withdraw the ongoing lawsuit in exchange.
In light of this situation, Inventis advised the Manufacturer that while the assignment application had been submitted, Indonesian trademark law allows the Distributor to withdraw this application until it is recorded in the General Register of Trademarks. Thus, withdrawing the lawsuit posed a risk as the Distributor might cancel the application if the lawsuit was abandoned.
Given that the trademark assignment was still under consideration by the DGIP, the recommendation was for the Manufacturer to continue with the court proceedings until a decision was reached.
Outcome: Ultimately, the Commercial Court ruled in favor of the Manufacturer, instructing the DGIP to cancel the trademark registered to the Distributor, even while the assignment application remained under review. This ruling enabled the Manufacturer to successfully register the trademark “Thermaltake Cool All Your Life + Device” in Indonesia under its name.
Key Takeaways:
This case underscores the critical importance for foreign companies planning to operate in Indonesia to proactively register trademarks in their own names before commencing business activities.
When devising litigation strategies, a thorough understanding of relevant laws, regulations, and court procedures is essential. For instance, in this case, had the Manufacturer acquiesced to the Distributor's request to withdraw the lawsuit merely based on the Distributor’s filed assignment application, it would have jeopardized its chances of securing trademark rights, similar to the outcome of the earlier lawsuit. After lawsuit withdrawal, the Distributor could have potentially cancelled the application for assignment as long as it had not yet been finalized in the General Register of Trademarks.
CS-2024-01
