Indogroupon: 'Groupon' But Not Belong to Groupon Inc

Well what do you know, another groupon-clone in Indonesia. A website called Indogroupon might end up in court just like what happened to a cell phone producer Taiwan HTC with HTC trademark owner (non affiliated) in di Indonesia. Not only they use the name “Groupon”, this website also has similar logo with Groupon, a black background trapezium with favicon exactly like Groupon’s. Furthermore, Indogroupon under PT Indogroupon Perkasa claimed that they are the owner of Groupon trademarkin Indonesia and has no direct connection with Groupon Inc. from US.

Indogroupon’s website required you to register your email to get updates and information on their daily specials. No information on offers available on its homepage . Unlike the real Groupon which uses the same technique, I really don’t feel like submitting my email here.

First of all, their homepage looks like it’s not even finished yet so I don’t think I’m gonna get any good deal from them. Second of all their Twitter account actually feeds from Groupon’s website in US. This might have happened because the website is yet to be officially launched, but taking Groupon’s feed, wearing all Groupon’s attributes, but claiming that they are not affiliated whatsoever with Groupun might be a blunder, especially related to Intellectual Property Rights (HKI).

HKI practitioner from Assegaf Hamzah & Partners, Ari Juliano Gema, said that basically, rights over a trademark are territorial. This means if there’s no registration on Groupon trademark before, anyone even though not Groupon Inc. or their affiliations, can claim the trademarkat HKI Directorate General. Related to a trademark registration, Dirjen HKI have the right to refuse it if their verification result shows that the registered brand:

1. Having similarity in principle or completely with other party’s brands that are already registered for similar goods and / or services;
2. Having similarity in principle or completely with the already well-known brands owned by other parties for similar goods and / or services;
3. Resembles a famous person's name, photograph, and the name of a legal entity owned by another person, except upon written approval of the eligible; or
4. An imitation or resembles the name or name abbreviation, flag, emblem or symbol or emblem of a state or national or international institution, except upon written approval of the competent authority;
5. an imitation or resembles a mark or seal or official stamp used by a state or government agency, except upon written approval from the authorities.

So what can Groupon Inc do if eventually they really enter Indonesia and wants to claim the brand? Ari said that even though Dirjen HKI has finally released their Trademark Certificate as approval for the brand’s registration, there is still a possibility for Groupon Inc. to submit their lawsuit to cancel the registration based on No.2 above, if Groupon Inc can prove that:

(a) Their trademark registration request was rejected by Dirjen HKI because other party has registered for it first; and (b) even though trademark “Groupon” hasn’t been registered by Groupon Inc. in Indonesia, this brand is a well known one and registered in many other countries with significant promotion and investment there.

However, Ari reminded that the lawsuit should not exceed 5 years since registration date. The longer they postpone it, the harder it is to claim trademark ownership. Will Groupon Inc. submit their objection on this trademark registration by other party in Indonesia?

Translated by Nita Sellya