Yamaha HatsudokiKabushiki Kaisha(“Yamaha”), a globally recognized Japanese multinational corporation andone of the world’s leading motorcycle manufacturers, has initiated trademarkcancellation proceedings against several registrations incorporating theelement “YMHLUBE PRO” owned by an Indonesian individual, LA JU.The case, registered under Case No. 9/Pdt.Sus-HKI/Merek/2026/PN NiagaJkt.Pst, is currently being examined by the Commercial Court at theDistrict Court of Central Jakarta. This action reflects a strategic enforcementeffort by a well-known trademark owner to preserve the integrity of its brandand prevent the registration and continued existence of marks that may diluteits distinctive identity or create an unauthorized association in themarketplace.
The Plaintiff is thelawful owner of the YAMALUBE trademark in Indonesia, registered underRegistration No. IDM000235273 in Class 4, covering lubricants.The YAMALUBE mark has been extensively and continuously used inconnection with Yamaha’s motorcycle products and related maintenanceecosystem. As a manufacturer with a dominant presence in the Indonesianautomotive market, Yamaha has established significant goodwill and consumerrecognition associated with its core trademarks, including YAMAHA and itsderivative marks such as YAMALUBE. Within the relevant consumer segment,YAMALUBE functions not only as a commercial identifier but also as a symbolof product compatibility, reliability, and manufacturer endorsement,reinforcing its strong distinctive character and reputation.
The Defendant isrecorded as the owner of several trademarks incorporating the dominant element“YMHLUBE” including YMHLUBE PRO under Registration No. IDM000943801in Class 4, YMHLUBE PRO under Registration No. IDM001212628in Class 1, and INFINEX YMHLUBEPRO under Registration No. IDM000660039in Class 4. The incorporation of the element “YMHLUBE” as thecentral and dominant component of these trademarks lies at the heart of thepresent dispute. Given the structural, phonetic, and conceptual proximitybetween “YMHLUBE” and the Plaintiff’s “YAMALUBE” mark,particularly in connection with lubricant products within the same or closelyrelated classes, the contested registrations raise substantial legal questionsunder Indonesian trademark law.
Under the IndonesianTrademark Law, specifically Article 21 paragraph (1) letters b and c of LawNo. 20 of 2016 concerning Trademarks and Geographical Indications, atrademark application must be refused, or an existing registration maybe cancelled, where the mark is identical with or similar in its essentialpart to a prior registered trademark or a well-known trademark owned byanother party, particularly in relation to similar goods or services. Thelegal standard for similarity under Indonesian law does not require exactreplication but instead focuses on whether the overall impression created bythe marks is sufficiently similar to create a likelihood of confusion amongrelevant consumers. This assessment considers the visual, phonetic, andconceptual characteristics of the marks, with particular emphasis on thedominant and distinctive elements that shape consumer perception.
In the present case,the similarity between YAMALUBE and YMHLUBE appears legallysignificant. From a phonetic standpoint, the omission of certain vowels in “YMHLUBE”does not materially alter the dominant phonetic structure, which remainsclosely aligned with the sound and rhythm of “YAMALUBE.” Indonesiancourts have consistently recognized that minor orthographic variations do notnecessarily eliminate similarity where the dominant phonetic impression remainscomparable. Conceptually, both marks incorporate the element “LUBE,”which directly refers to lubricants, reinforcing the association betweenthe marks within the automotive lubricant sector. Furthermore, the coexistenceof the contested marks and the Plaintiff’s trademark within Class 4,covering identical goods, substantially increases the risk that consumersmay reasonably assume a commercial relationship, authorization, or affiliationbetween the Defendant’s products and Yamaha.
In addition tosimilarity, the case may also engage the legal doctrine of bad faithregistration, as governed by Article 21 paragraph (3) of Law No. 20 of 2016.Under Indonesian trademark jurisprudence, bad faith may be inferred where atrademark applicant registers a mark with knowledge of an existing markbelonging to another party, particularly where that mark has achievedsubstantial recognition, and adopts elements of the earlier mark in a mannerthat suggests an intention to benefit from its reputation or goodwill. The factthat the Defendant holds multiple registrations incorporating the same dominantelement “YMHLUBE” may reinforce the inference that the registrationswere not coincidental but rather reflect a deliberate pattern of adoptingelements closely resembling the Plaintiff’s established mark. Given Yamaha’slongstanding commercial presence and extensive brand recognition in Indonesia,it would be difficult to argue that the existence of the YAMALUBE markwas unknown at the time of filing the contested applications.
Indonesian trademarklaw also provides enhanced protection to well-known marks, reflectingIndonesia’s obligations under international agreements, including the Agreementon Trade-Related Aspects of Intellectual Property Rights (TRIPS). IndonesianCommercial Courts have demonstrated an increasing willingness to safeguard well-knowntrademarks against unauthorized imitation, particularly where the contestedmarks may create a false impression of association or endorsement. In thiscontext, the close association between YAMALUBE and the highlyrecognized YAMAHA brand strengthens the Plaintiff’s legal position, asderivative marks that are intrinsically linked to well-known parent brandsoften benefit from broader protection against imitative registrations.
This case carriessignificant implications for trademark owners operating in Indonesia,particularly multinational companies whose brand value depends heavily onmaintaining exclusive control over distinctive brand elements. A decision infavor of the Plaintiff would reinforce Indonesia’s legal framework as one thateffectively protects well-known trademarks against imitative registrations andbad faith filings. Such an outcome would also serve as an important reminderthat attempts to appropriate elements of established trademarks, particularlywithin the same industry sector and for identical goods, are unlikely towithstand judicial scrutiny under Indonesian law.
The proceedings remainongoing before the Commercial Court at the District Court of Central Jakarta,and the eventual decision will be closely observed by trademark practitioners,brand owners, and intellectual property professionals, both domestically andinternationally. The outcome is expected to contribute further clarity to thelegal standards governing similarity, bad faith, and the protection ofwell-known trademarks within Indonesia’s evolving intellectual propertylandscape.
As an Indonesia-basedintellectual property law firm with extensive experience in trademarkprotection, enforcement, and dispute analysis, ARBIL & Co. regularlymonitors and evaluates key trademark developments before Indonesian courts. Forfurther discussion or consultation regarding intellectual property protectionand enforcement strategies in Indonesia, you are invited to contact ARBIL& Co. at info@arbil.co.id.Our firm provides strategic legal analysis, risk assessment, and comprehensivelegal support tailored to the needs of international and domestic rightsholders seeking to secure and enforce their intellectual property rights inIndonesia.