Internet Giant Tencent Holdings Ltd. Wins Key Trademark Case in Indonesia
Tencent Holdings Ltd., one of the largest Internet companies in the world, has won an important trademark cancellation victory in Indonesia in a decision recently announced by the Jakarta Commercial Court, securing the cancellation of conflicting trademarks that were filed in bad faith and would have caused confusion among Indonesian consumers.
On September 5, 2012, Tencent, creator and owner of the massively popular instant messenger service “QQ” and operator of one of the largest web portals in the world, QQ.com, sued an Indonesian businessman who had registered three “QQ” trademarks, alleging that the registrations were made in bad faith and that because Tencent was the first registrant in Indonesia of the “QQ” trademarks for the goods and services in question, the defendant’s trademark registrations should be cancelled by the Indonesian Trademark Office.
In a recently announced decision, the Jakarta Commercial Court found for Tencent in all respects (No. 54/MEREK/2012/PN.NIAGA.JKT.PST, dated January 22, 2013).
The case was litigated in Indonesia by Januar Jahja & Partners (JJP), a boutique intellectual property law firm based in Jakarta, Indonesia, specializing in trademark litigation. Mr. Januar Jahja, the firm’s managing partner with over 35 years experience in Indonesian intellectual property law, applauded the Court’s decision, stating: “The evidence was very clear: Tencent was the first registrant in Indonesia of the “QQ” mark for the goods and services at issue. The defendant’s marks are similar to Tencent’s prior registrations and cover similar goods. Under Indonesian law, the later registrations must be cancelled. The Court was absolutely right in its decision.” The firm was assisted by Singapore counsel K.L. Tan & Associates, a boutique law firm specializing in intellectual property law.
In ruling in favor of Tencent on all counts, the Jakarta Commercial Court found as a matter of fact that Tencent had the first registration for “QQ” in Indonesia for the goods and services at issue (in Class 9 under the “Nice Classification System”), as well as numerous registrations for this mark throughout the world. Because Indonesia is a first-to-file jurisdiction, the Court ruled that Tencent is the first owner and registrant of the “QQ” mark in Indonesia.
The Court also declared that “QQ” should be considered a well-known trademark in Indonesia, in accordance with Article 6(1) of the Indonesian Trademark Law (No. 15/2001), based upon the substantial amount of evidence submitted by Tencent.
Further, because the defendant filed his trademark applications approximately five years after Tencent first filed its own “QQ” applications in Indonesia, and that the trademarks were visually similar and covered similar goods, the Court ruled that the defendant’s marks were not entitled to legal protection in Indonesia. Coupled with the Court’s ruling that Tencent’s “QQ” mark was well known, the Court declared that the defendant had filed its marks in bad faith.
Due to a real risk of confusion among consumers, the Court ordered that the defendant’s “QQ” trademark registrations be cancelled by the Indonesian Trademark Office and published in the Official Gazette as cancelled marks.
The decision has been appealed by the defendant to the Indonesian Supreme Court for review.
About Tencent Holdings, Ltd.
Tencent Holdings, Ltd., together with its subsidiaries, is one of the largest Internet companies in the world. Founded in 1998, Tencent’s Internet platform has grown to include such diverse services as social media, web portals, e-commerce and online games, with the goal of providing “one-stop online lifestyle services.” Its signature product, the QQ instant messenger service, has over 700 million active users, making it the largest online community in the China.
About Januar Jahja & Partners
Januar Jahja & Partners is a boutique intellectual property law firm based in Jakarta, Indonesia. The Firm has over 25 years experience handling all aspects of intellectual property law, including trademark and patent prosecution as well as IP-related litigation and other contentious matters, and provides legal services and counsel to well-known international businesses as well as leading Indonesian companies.
About K.L. Tan & Associates
K L Tan & Associates is a boutique law firm based in Singapore focusing on Intellectual Property law and provides legal services in all areas of intellectual property and related transactional matters. The firm provides services in the following areas: Registration, prosecution and management of patents, trademarks and designs; Franchising, licensing, computer contracts, trade secrets and confidential information; and Litigation in Intellectual Property.