In today’sincreasingly globalized business landscape, trademark protection has becomeparamount, particularly for prominent companies and renowned trademarks like HUGOBOSS AG. A trademark serves not only as a symbol of a company’s identitybut also as a valuable asset with substantial worth in international markets.One notable case that has garnered attention in Indonesia is the lawsuit filedby HUGO BOSS AG against John Laibahas, who registered a trademarkstrikingly similar to the famous "HUGO BOSS" trademark. Thiscase sheds light on the challenges international companies face in protectingtheir trademarks within local jurisdictions and underscores the importance of LawNo. 20 of 2016 on Trademarks and Geographical Indications (Law No. 20 of2016) in providing legal protection for well-known trademarks.
The HUGO BOSS Casein the Commercial Court of Central Jakarta
In Decision No.80/Pdt.Sus-HKI/Trademark/2025/PN Niaga Jkt.Pst, rendered on November 3,2025, HUGO BOSS AG filed a cancellation lawsuit against the "HugoSpandex Fit" trademark, registered under registration number IDM001127116in class 25 by John Laibahas. HUGO BOSS AG argued that thetrademark registered by the defendant was substantively similar to theirglobally recognized trademark and should, therefore, be canceled.
Despite HUGO BOSSAG being the owner of an internationally registered famous trademark, thelawsuit was dismissed by the court. The Commercial Court in Central Jakartaruled that there was insufficient evidence to demonstrate that the "HugoSpandex Fit" trademark was significantly similar to the "HUGOBOSS" trademark or could cause confusion among consumers. Thisdecision highlights the critical need for strong evidence to support claims oftrademark similarity, reinforcing the notion that the protection of well-knowntrademarks in Indonesia depends on clear and compelling evidence.
Protection ofWell-Known Trademarks in Indonesia: Legal Implications
This case providesvaluable insights into the protection of well-known trademarks under Indonesianlaw. According to Law No. 20 of 2016, trademarks that are duly registered andwidely recognized internationally are entitled to special legal protection inIndonesia. However, this protection is not automatically granted.
Article 21 (1) of the Trademark Law stipulatesthat a trademark application that is similar in essence and/or in its entiretyto a well-known trademark can be rejected, whether for similar or dissimilargoods and/or services. Although HUGO BOSS AG has had its "HUGO"trademark registered in multiple countries, including Indonesia since 1989, thecourt found no significant similarity between the trademark registered by JohnLaibahas and the "HUGO BOSS" trademark. This decisionunderscores the importance of a thorough evaluation of overall trademarkcharacteristics, rather than relying on isolated elements.
The Position ofthe Defendant: John Laibahas
John Laibahas, the defendant in this case, holdsthe registered trademark "Hugo Spandex Fit" which wasregistered on October 6, 2023, in class 25. Laibahas argued that thetrademark was not intended to imitate or infringe upon the "HUGO BOSS"trademark. In his defense, Laibahas contended that, despite using the name"Hugo" the trademark differed sufficiently in design andpronunciation to prevent confusion in the market.
The court concludedthat, although there was some resemblance in the name "Hugo"the differences in other design elements, coupled with the defendant’s goodfaith in registering the trademark, were sufficient to prevent the cancellationof the trademark. This ruling emphasizes the need to foster healthy marketcompetition while ensuring that trademark rights are not unjustly exploitedbased on weak claims.
Key Takeaways forIntellectual Property Lawyers
For IntellectualProperty (IP) lawyers dealing with international clients, especially thoseworking with well-known trademarks in Indonesia, an in-depth understanding ofthe Indonesian trademark system is essential. Indonesia follows a first-to-filesystem, which means trademark rights are granted to the first party to file atrademark application, rather than solely based on prior use or globalrecognition. Consequently, IP lawyers should ensure that their clients’trademarks are registered promptly in Indonesia, particularly for those thatare well-established internationally.
Moreover, inunderstanding similarity in essence and/or in its entirety, IP lawyersshould recognize that similarity in essence refers to the presence of dominantelements that could lead to consumer confusion. These elements include thename, logo, and design of the trademark, which are often seen as the keyidentifiers in the marketplace.
Will HUGO BOSS AGFile for Cassation?
As of the publicationof this article, it is uncertain whether HUGO BOSS AG will file for cassationagainst the ruling to the Supreme Court of the Republic of Indonesia. Asthe losing party, HUGO BOSS AG has the right to seek cassation, asprovided in Article 78 (1) of the Law No. 20 of 2016, which states:
"A cassationappeal may be filed against the Commercial Court’s decision on a cancellationlawsuit as referred to in Article 76 (3)"
Therefore, althoughthe decision has been made, HUGO BOSS AG still has the opportunity tocontinue the legal process by filing for cassation. This process will becrucial for ensuring the protection of well-known trademarks in Indonesia andfor testing the boundaries of trademark protection within the local market.
InternationalTrademark Protection in Indonesia
Indonesia offersrobust legal protection for well-known trademarks, but challenges remain,especially concerning the evidence required to support claims of infringement.IP lawyers handling international trademark cases in Indonesia must understandthe trademark registration system and the legal principles governing similarityin essence and/or in its entirety. Timely and proper trademark registrationis vital for ensuring optimal legal protection for international companies.
If you are anIntellectual Property lawyer handling international trademark cases or acompany seeking to protect your trademark in Indonesia, ARBIL & Co.is here to assist you with our expertise in international trademark law.Contact us at info@arbil.co.id for further consultation.