Swiss-based famous chocolate manufacturer Delfi was recently forced to swallow bitter pills as the Supreme Court of the Republic of Indonesia decided against them in a lawsuit over the company’s mark “DELFI CHACHA”. The company has used the mark for small droplets of chocolate candies, a product that is popular among Indonesians.
The case was initiated by Delfi Chocolate Manufacturing SA of Switzerland, who filed an application to register the mark DELFI CHACHA to the Directorate General of Intellectual Property (DGIP) on May 16, 2019, under application number DID2019026369. The application was filed to cover goods under Class 30.
To Delfi’s surprise, the application was partially rejected by the DGIP on April 2, 2021, for listed goods “biscuits, cacao, produces largely made of or consist of chocolate and/or cacao, cakes, chocolates, biscuits, chocolate wafers, wafer biscuits, cake products due”; to similarity with another mark, CHA-CHA, which had been registered earlier in the name of Jogi Hendra Atmadja. Among all goods claimed by Delfi in the application, only “confectioneries; chocolates” was spared from the rejection.
Following the application’s outcome, Delfi filed an appeal to the Trademark Appeal Commission on August 3, 2021. The commission however on November 19, 2021, sustained DGIP’s decision, which prompted Delfi to file an objection lawsuit to the Commercial Court of Central Jakarta. Panel of Judges at the Commercial Court, chaired by Muhammad Yusif, still decided against Delfi’s case on September 22, 2022.
As the last straw, Delfi filed a cassation to the Supreme Court. Unfortunately, this also ended unfavorably to Delfi as the Cassation Panel consisting of Chairman I Gusti Agung Sumanatha, Panji Widagdo and Rahmi Mulyati delivered a judgment that not only rejected Delfi’s demand, but also ordered Delfi to pay for the IDR 500 court’s expenses.
According to the Cassation Panel, Delfi’s TM registration application DID2019026369 for “DELFI CHACHA” in Class 30 embodied substantial similarities with Jogi Hendra Atmadja’s “CHA-CHA” that had already been registered for similar goods of the same class 30 under registration number IDM000400409