Pierre Cardin v Pierre Cardin: Why the French Fashion House Lost in Indonesia

By Imaduddin

Photo: kestkayl / Pixabay

Pierre Cardin was one of the best-known names in twentieth-century fashion. In Indonesia, however, the French house of the late designer could not stop a local businessman from owning a registration for exactly the same words. The case is one of the most cited examples of how Indonesia's older trademark history can still decide disputes today.

The background

According to the Supreme Court decision and academic commentary on it, Alexander Satryo Wibowo registered PIERRE CARDIN in Indonesia in 1977, at a time when Indonesian trademark law followed a first-to-use system. His products carried the words "Product by PT Gudang Rejeki". The French company, Pierre Cardin, later sued at the Central Jakarta Commercial Court to cancel the Indonesian registration, arguing that its mark was well known and that the local registration copied the designer's own name.

The court decisions

The Commercial Court rejected the claim on 9 June 2015 (Case No. 15/Pdt.Sus-Merek/2015/PN.Niaga.Jkt.Pst), according to a legal analysis published in the Novum journal of Universitas Negeri Surabaya. The French company appealed, and on 30 November 2015 the Supreme Court rejected the cassation in Decision No. 557 K/Pdt.Sus-HKI/2015, according to the court's decision directory.

The majority's reasoning, as reported by detikcom, was that the Indonesian registration came first and that the French side registered only later. The court also noted that a lawsuit over the same mark had already been brought in the early 1980s, so the claim could not be brought again. Commentary on the case adds that the court regarded the wording "Product by PT Gudang Rejeki" as helping to distinguish the goods.

The case did not end there. Detikcom reported in September 2018 that the French company also lost a case review (peninjauan kembali) in Decision No. 49 PK/Pdt.Sus-HKI/2018. Of the six justices across the two Supreme Court panels, only one, Justice Nurul Elmiyah, would have ruled for the French company. In her dissent, she wrote that the mark was the designer's own foreign name and was well known internationally.

Why the case is controversial

Critics, including the Novum analysis, argue that the court should have applied the 1961 Trademark Law that governed the original registration, and that a product statement such as "Product by PT Gudang Rejeki" is not part of the mark and should not count as a distinguishing element. Supporters of the result point to legal certainty: a registration that has stood for decades, and survived an earlier challenge, should not be easily overturned.

Lessons for foreign brand owners

Today, Law No. 20 of 2016 on Marks and Geographical Indications requires the refusal of applications filed in bad faith (Article 21(3)) and of marks similar to another party's well-known mark (Article 21(1)(b) and (c)). Cancellation actions normally have to be filed within five years of registration, but Article 77(2) removes that time limit where there is bad faith. But those tools work best before a rival registration becomes entrenched. Foreign owners should file in Indonesia early, watch the register, and act quickly when a copy appears.

Sources

• Supreme Court of the Republic of Indonesia, Decision No. 557 K/Pdt.Sus-HKI/2015, Pierre Cardin v Alexander Satryo Wibowo (decision directory)
• detikcom, "Merek Pierre Cardin Milik Orang Jakarta, MA Terbelah" (6 September 2018)
• Novum: Jurnal Hukum (Universitas Negeri Surabaya), analysis of Supreme Court Decision No. 557 K/Pdt.Sus-HKI/2015 (PDF)
• JDIH BPK, Law No. 20 of 2016 on Marks and Geographical Indications (statute text and status, in Indonesian)