A cassation judgment recently delivered in September 2022 by the Supreme Court overturned a first instance decision by the Commercial Court of Central Jakarta and cleared owner of ERIGO brand from trademark infringement allegations.
The case attracted considerable attention especially from younger generations who are active in social media since the defendant is the owner of a local fashion brand ERIGO, which in the last three years managed to gain significant followers through several high profile marketing campaign involving a number of renowned Indonesian celebrities as well as social media influencers. Among the high profile campaigns engaged by ERIGO were ads placement in Times Square, New York, along with their participation in various events during the New York Fashion Weeks event of 2021 and 2022.
The dispute began when an owner of another local brand, ERG, which has been registered as mark for clothing goods in Class 25 in Indonesia since 2014, realized that ERIGO had been marketing clothing products such as t-shirts, jackets, sweaters and hoodies displaying large characters of “ERG” in various spots in each product, including ones where “ERG” was displayed prominently at the front side.
After trying to contact ERIGO for such unconsented and therefore unauthorised use of the registered trademark without receiving timely and proper response, in the latter half of 2021 ERG eventually decided to take the matters to legal action by filing a lawsuit to the Commercial Court of Jakarta. Aside seeking court order for ERIGO to cease their use of ERG in their products, the lawsuit also seek for material damages in the amount of IDR 9 billion, calculated from total sales value of sold products bearing the characters “ERG” by ERIGO as indicated by various e-commerce platforms.
In July 2022, the Commercial Court decided the case in favor of ERG, which included full award of damages at the requested amount. Unsatisfied with the outcome, ERIGO filed a cassation to the Supreme Court.
Supreme Court’s decision however turned out to be an anti-climax for ERG as the Court instead cleared ERIGO from trademark infringement. According to the judgement that was laid out in approximately five paragraphs, the Supreme Court Panel of Justices considered ERIGO’s registration of their own ERIGO marks as an evidence that ERIGO uses the mark rightfully, and went on to the decide that ERIGO did not infringe ERG’s marks through the prominent use of “ERG” characters in ERIGO’s products due to the fact that ERIGO has registration of its own mark “ERIGO”.
Several practitioners as well as academics in IP field see this decision as yet another anomaly among Indonesian Supreme Court’s judgments in IP cases, especially in view of the commonly accepted norms with regards to trademark infringement principles. Until this news is released, the owner of ERG is still considering the option of filing judicial review against the cassation decision.