The ongoing DENZAlitigation represents a critical juncture for foreign brand owners navigatingthe complex Indonesian trademark landscape. While the initial round of thedispute between BYD Company Limited and local registrants ended in aprocedural dismissal, the subsequent re-match offers a sophisticated analysisof the interplay between the first-to-file principle, the pervasivedoctrine of bad faith, and the rigid strictures of Indonesian civilprocedure. This case serves as a vital touchstone for intellectual propertypractitioners who must balance substantive merit with flawless proceduralexecution.
TheProcedural Bottleneck: Error in Persona and the Assignment of Rights
The initiallitigation, registered under Decision No.1/Pdt.Sus-HKI/Merek/2025/PN.Niaga.Jkt.Pst, culminated in a final dismissalat the Cassation level through Decision No. 1338 K/Pdt.Sus-HKI/2025. Thedismissal was not predicated on a failure to prove substantive merit, butrather on a formidable procedural roadblock. By the time the lawsuit reachedthe Commercial Court, the defendant had already executed a private assignmentof the trademark rights to a third party, PT Raden Reza Adi.
This caseillustrates a recurring and difficult challenge in Indonesian IP litigationoften referred to as the assignment trap. Under the Indonesian legal framework,once rights are legally assigned and recorded, or even executed via notarizeddeed, the standing of the original registrant is effectively neutralized in theeyes of the court. The Supreme Court ruling explicitly confirms that thefailure to join the successor-in-interest at the inception of the lawsuitrenders the claim susceptible to an error in persona exception. Thistechnical deficiency effectively bars the court from reaching the substantivemerits of bad faith or the "well-known mark" status that theplaintiff had meticulously prepared.
TheRe-Match: Synthesizing Substantive and Procedural Rigor
In the currentaction, Case No. 64/Pdt.Sus-HKI/2026/PN Niaga Jkt.Pst, the plaintiff hasrecalibrated its legal strategy by adopting a highly sophisticated,multi-pronged approach to overcome the previous jurisdictional hurdles. Bynaming both the original registrant and the current assignee as co-defendants,the plaintiff aims to achieve a comprehensive strategic alignment thatanticipates the defendant's previous reliance on procedural shifts.
By retainingthe original registrant as a party, the plaintiff ensures that the evidence ofbad faith, which constitutes the mens rea behind the initial registration,remains fully admissible and relevant to the court's consideration of whetherthe mark was tainted from its inception. Simultaneously, by naming the currentassignee, the plaintiff ensures that any eventual cancellation order issued bythe Court possesses the required legal force to bind the party currentlyappearing in the Directorate General of Intellectual Property registry. Thisdual-naming strategy effectively closes the loophole of post-factoassignments.
LegalDialectics: Beyond the First-to-File Doctrine
The DENZAcase compels us to re-examine the inherent tension between Indonesia’s first-to-filesystem and the international obligation to protect well-known reputation.Unlike standard cancellation actions, this re-match brings into sharp relief afoundational question for the Indonesian judiciary: will the courts prioritizethe sanctity of the register, specifically the constitutive nature ofregistration, or the equitable doctrine of bad faith when a registrantexhibits a demonstrable pattern of acquiring marks associated with globalindustry leaders?
The core issueremains whether a registrant can effectively insulate a mark from cancellationsimply by performing a post-facto assignment to a third party, orwhether the doctrine of bad faith under Article 21(3) of theTrademark Law imposes a permanent legal taint on the mark that survivessubsequent assignments. If the judiciary allows the former, it risksincentivizing the use of corporate restructuring as a shield against legitimateIP enforcement. If it leans toward the latter, it signals a significantstrengthening of IP protections in Indonesia.
As this caseproceeds to the evidentiary phase, the legal community is observing withintense interest whether this multi-defendant strategy will successfully bypassthe formalistic barriers encountered in the previous round. Will the Court lookpast the technical assignment of rights to the underlying conduct and businesspatterns of the parties involved? Or will the procedural rigidity thatcharacterized the first-instance courts in the previous dispute persist in theface of these new tactical refinements?
The DENZAre-match serves as a poignant reminder that in the demanding arena ofinternational IP litigation, substantive success is inextricably linked toprocedural precision. The case reflects the inherent complexity of trademarkdisputes, where victory depends not only on the undisputed strength of abrand's reputation but on the practitioner’s diligence in mapping the legalposition of all parties and proactively anticipating administrative shiftsthroughout the entire life cycle of the dispute.
At ARBIL& Co., we are committed to providing strategic solutions to navigatethe complexities of trademark disputes in Indonesia. If you require legalassistance regarding non-use cancellation actions, trademark invalidityactions, or the development of comprehensive trademark protection strategies,please contact our expert team at info@arbil.co.id.