“Holiday” Confusion?
07 September 2012
Indonesia is among the most popular holiday destinations in the world. However, a Supreme Court Decision handed down on February 9, 2012, may make it difficult for Holiday Inn Resortto get a good night’s sleep.
The case involved famous US hotel operator Six Continents Hotels (the Appellant), owner of the very-reputed Holiday Inn brand, whose appeal to cancel the registration of the mark Holiday Resort Lombok, owned by local company Lombok Seaside Cottage (the Defendant), failed before the Supreme Court. The company had earlier failed before the Commercial Court on this issue.
The main argument raised by the Appellant against the Holiday Resort Lombok mark was that it is similar
to their Holiday Inn and Holiday Inn Resort marks which were registered in Indonesia. The Appellant claimed that the word “Holiday” was the main trade identifier in their marks and use of this term in the Defendant’s mark was causing confusion in the market place. On this basis, the Appellant sought cancellation of the Defendant’s mark in Indonesia. It also prayed that the word Holiday be declared as an essential part of the Appellant’s trademarks such that the Appellant could enjoy an exclusive right over this term. In 2010, the Commercial Court rejected the Appellant’s claim due to differences of the letter arrangement and sound between the contending marks.
On appeal, the Supreme Court upheld the Commercial Court’s decision and observed that the word Holiday in respect of hotel services is a fairly common descriptive term. Hence, it cannot be allowed to be monopolized by any single trader. The Court observed that just like the word cola in Coca-Cola, Pepsi Cola, RC Cola, etc, the word Holiday figures in the list of common words maintained by the Directorate General of IPR, owing to which, several other marks having Holiday as an element, for example, Holiday on Ice, Holiday Asia, Planet Holiday, Flexi Holiday, etc, were accepted for registration. In light of this reasoning, the Appellant’s appeal was rejected.
