BUSINESS LAW

CASE STUDY:
HUGO BOSS TRADEMARK COUNTERFIET IN INDONESIA

Alyssa Khairafani
School of International Business Administration
Faculty of Business and Social Sciences
International University Liaison Indonesia
BSD City, Serpong, Tangerang Selatan
E-mail: alyssakhaira@gmail.com
Student ID: 11201608007

Malinda Shella Rahmadani

School of International Business Administration
Faculty of Business and Social Sciences
International University Liaison Indonesia
BSD City, Serpong, Tangerang Selatan
E-mail: malindarahmadani27@gmail.com
Student ID: 11201608005

Michelle Adelia Winata

School of Hotel Tourism Management
Faculty of Business and Social Sciences
International University Liaison Indonesia
BSD City, Serpong, Tangerang Selatan
E-mail: michellewinarta7@gmail.com
Student ID: 11201610002

Yosef Dimas Darien Putera

School of Management
Faculty of Business and Social Sciences
International University Liaison Indonesia
BSD City, Serpong, Tangerang Selatan
E-mail: dimasputera@gmail.com
Student ID: 11201616001

Lecturer:
Dimas Anugrah A. A.

1
 ABSTRACT
This paper examines the case of Hugo Boss versus Hugo Sport in Indonesia. The plaintiff (Hugo Boss)
has sued the defendant (Hugo Sport) for unauthorized usage of their brand name which as a result affect the
business performance and quality of the former. The court decision was in favored of the plaintiff and the latter
was forced to discontinue its product.

Keyword: Hugo Boss, trademark, unauthorized, and infringement

ABSTRAK
Makalah ini membahas kasus Hugo Boss versus Hugo Sport di Indonesia. Penggugat (Hugo Boss) telah
menggugat tergugat (Hugo Sport) atas penggunaan tidak sah atas nama merek mereka sebagai hasil dari kinerja
bisnis dan kualitas dari yang pertama. Keputusan pengadilan mendukung penggugat dan yang terakhir dipaksa
untuk menghentikan produknya.

Kata kunci: Hugo Boss, merek dagang, tidak sah, dan pelanggaran

I. INTRODUCTION
Throughout the years, many big corporations have their brand name counterfeited as
well as their products. The Global Branding Counterfeiting Report 2018 estimates that “the
losses suffered due to global online counterfeiting has amounted to 323 billion USD in the year
2017, with luxury brands incurring a loss of 30.3 billion dollars through internet sales”
(Adegeest, 2018).

Plagiarism is, unfortunately, a very common occurrence in all types of industries. As

Dom Carter asked in his article; “where do we draw the line between a coincidence, or imitation,
and outright plagiarism?”

Michael Johnson, a British designer and brand consultant, explains the issues that come
with brand creativity. Being an industry bigshot, he came down to talk about the new Formula
1 logo that is meant to rebrand the industry. The logo went through harsh criticism due to the
‘F’ logo having similar design and curve to the logo of 3M. Johnson talked to Wieden and
Kennedy, the independent advertising agency for the Formula 1 rebrand; “Now, Wieden and
Kennedy tell me that they did thorough trademark checks in all their relevant categories – but
imagine for a moment the enormity of that task." True, the sheer size of cross-checking is
massive, since there are so many brands registered into many different areas. "There are 45
different classes of goods and services, and 29 image classifications – and that’s just in Europe.
The US system is slightly different, and in some countries, registration is still done on paper and
fax! So, factor all that in, and it’s easy to see how one single application for medical clothing
slipped past the eyes of the checkers” (Carter, 2018).

In Indonesia, it is noticeable to see that trademark laws can be too lenient at times, either
purposefully for personal profit or simply due to incapability. Speculations suggest that it is
certainly not the latter, as corruption in the country still runs rampant and can allow such acts of
plagiarism that is not one to be considered misdemeanor. What makes it worse is that
government agencies would tend to obstruct justice. The fight for equal rights in branding is still
a long one to overcome.

2
 Figure 1: Chief Producers and Trade Routes for Counterfeit Products

Source: (Salvatierra, 2017)

II. ANALYSIS
II.1. TRADEMARKS INFRINGMENT
Trade is a “sign capable of distinguishing the goods or services of one enterprise from
those other enterprises” (World Intellectual Property Organization, 2018). Furthermore,
trademarks are protected by intellectual property rights. Thus, trademark infringement is
“the unauthorized use of a trademark or service mark on or in connection with goods and/or
services in a manner that is likely to cause confusion, deception, or mistake about the source of
the goods and/or services” (United States Patent and Trademark Office, 2018). In other words,
it is when a person use a brand’s trademark, be it logo, on competing in a related good or service

3
industry (NOLO, 2018). Hence, a trademark owner who believes its mark is being infringed
may file a civil action, such as a lawsuit, in court for trademark infringement.

If the trademark owner is able to prove that infringement took place, there are available
remedies that the trademark owner can appease for which may include the following (United
States Patent and Trademark Office, 2018):

 a court order (injunction) that the defendant has to stop using the accused mark/logo;
 an order requiring the destruction or forfeiture of infringing articles;
 monetary relief which may include the defendant's profits, any damages sustained by the
plaintiff, and the costs of the action; and finally
 an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.

When infringement occurs, a trademark owner (the plaintiff) may file a lawsuit against
the infringed trademark that is utilized by the infringed user (the defendant) to prevent further
use of the mark and collect money damages for the wrongful use (NOLO, 2018).

II.2. ANALYSIS FROM CASE

In this trademark infringement case, the use of the word "Hugo" by the defendant has
been hurting the Hugo Boss brand (along with its variations) business. Furthermore, the
defendant’s “Hugo” has the same word "Hugo" that has been on the Hugo Boss brand (along
with its variations) that belongs to the plaintiffs whom the latter have used, registered and is
famous for as premium and high quality brands. Hugo Boss is known to have 6,102 stores in
more than 100 countries. The fashion company from Metzingen, Germany has been established
since 1924 (Basari, 2018).

Furthermore, the usage of words “Hugo” in the disputed Hugo brands clearly did not
original come from the idea of the defendant's or intellectuals because of the word “Hugo” is
known and/or there is no equivalent, and/or does not have a grammatical meaning in Indonesian
language grammar. In addition, the defendant's actions have utilized the plaintiff’s trademarks
in a “bad faith.” Moreover, the brand have the same principle which can be seen as an act of
fraudulent competition (dishonest practices in industrial commercial matters) or fraudulent
concurrency against the Hugo brands.

The defendant's actions has damaged the reputation of the eyes of the international
community especially for investors who want to invest in Indonesia. The act has also defiled
Indonesia's reputation as one of the participants of the Paris Convention for the Protection of
Industrial Property and Convention Establishing the World Intellectual Property Organization
("Paris Convention") and as a country that upholds supremacy law including intellectual
property law.

III. CONCLUSION
The case for cassation against Teddy Tan was registered in the Supreme Court with a
register of 92 K / Pdt.Sus-HKI / 2017. This appeal was submitted by Hugo Boss Trade Mark
after losing at the Central Jakarta Commercial Court in case No. 30 / Pdt.Sus-HKI / 2016 / PN
JKT.PST. (Basari, 2018).

4
 The Supreme Court assesses that the Judex Facti Panel of Judges has wrongly applied
the evidentiary law, in this case, the error occurred during the Judex Facti Panel of Judges in
which they conducted an examination/assessment of the expert Soemardi Partoredjo presented
in court by the defendant. In this regard, the plaintiff has expressed their objection to the expert
Soemardi Partoredjo because the plaintiff remembered the expert Soemardi Partoredjo relative
is a former official in the Directorate of Trademarks and Geographical Indications who is also
parties to the a quo case as Turut Respondent Cassation (the accused). Cassation Case No. 92
was decided by a panel of judges consisting of Hamdi, I Gusti Agung Sumanatha, and Mahdi
Soroinda Nasution. The case was decided on April 4, 2017 with the court clerk replacing Ninil
Eva Yustina (Basari, 2018).

The Judges of Judex Facti was clearly not observant and careful when he assessed the
information conveyed by expert Soemardi Partoredjo. In this case the Commercial Court to the
Court Central Jakarta State has wrongly applied the law with consideration as follows:

That legal consideration of the decision of the Judex Facti who refused the claim the
plaintiff cannot be justified, because it is based on facts. Thus, the Judex Facti has wrongly
applied the respective law, which turns out to be an object of dispute those registered in the
name of the defendant have the same principle both from sound and writing with a registered
brand and/or trademark. The plaintiff who is a well-known brand is the Hugo Boss brand (along
with the variations).

In this case Hugo Boss asked the court to cancel or declare null and void the registration
and/or extension of brands with Teddy Tan's Hugo words as follows (Basari, 2018):

1. The Hugo Hugo Sport brand is in the 25th grade with a registration renewal
IDM000191519 number dated January 28, 2009 which is an extension of registration
number 467312 registered on February 23, 2001.

2. Hugo brand in class 25 with registered IDM000156404 registration number on

March 3, 2008.

3. Hugo Hugo Sport brand in class 25 with registration number IDM000345958

registered on January 19, 2012.

4. Brand Hugo Sport + Painting in grade 25 with registration number IDM000248526

registered on May 24, 2010.

5. Hugo Select Line brand in class 35 with registered IDM000250836 number dated
June 4, 2010.

6. Hugo brand in class 35 with registered IDM000250934 number dated June 7, 2010.

5
IV. BIBLIOGRAPHY
Adegeest, D.-A. (2018, May 19). Global Counterfeiting Costs Luxury Brands Billions of
Dollars. Retrieved October 4, 2018, from Fashion United:
https://fashionunited.uk/news/fashion/global-counterfeiting-costs-luxury-brands-
billions-of-dollars/2018051929734
Basari, M. T. (2018, September 26). Hugo Boss Menang di MA, Ini Daftar Merek yang
Dibatalkan. Retrieved October 3, 2018, from Kabar24:
http://kabar24.bisnis.com/read/20170926/16/693190/hugo-boss-menang-di-ma-ini-
daftar-merek-yang-dibatalkan
Carter, D. (2018, March 19). How can designers deal with plagiarism? Retrieved October 3,
2018, from Creative Bloq: https://www.creativebloq.com/features/how-can-designers-
deal-with-plagiarism
Köster, R. (2014, September 23). Corporate History: From A Small Clothing Worshop to An
International Lifestyle Group. Retrieved October 2, 2018, from Hugh Boss:
https://group.hugoboss.com/files/user_upload/Konzern/Study_on_the_Company_s_His
tory_Abridged_Verson_en_final.pdf
NOLO. (2018). Is It Trademark Infringement? Retrieved October 2, 2018, from NOLO:
https://www.nolo.com/legal-encyclopedia/is-it-trademark-infringement
Salvatierra, J. (2017, June 22). Where Do the World's Counterfeit Goods Come From? Retrieved
October 3, 2018, from El Pais:
https://elpais.com/elpais/2017/06/22/inenglish/1498121880_945362.html
United States Patent and Trademark Office. (2018). About Trademark Infringement. Retrieved
October 3, 2018, from United States Patent and Trademark Office:
https://www.uspto.gov/page/about-trademark-infringement
World Intellectual Property Organization. (2018). Trademarks: What is a Trademark?
Retrieved October 3, 2018, from WIPO - World Intellectual Property Organization:
http://www.wipo.int/trademarks/en/