Trademark Non-Use Cancellation Action in Indonesia

Trademark Non-Use Cancellation Action in Indonesia

The Law No. 20 Year 2016 on Marks and Geographical Indications (hereinafter referred to as the “Trademark Law”) regulates how a Mark shall be protected, and how one can lose it due to various reasons – and non-use is one of them. Article 74 Para (1) of the Trademark Law state states that the cancellation of a registered trademark can also be filed by an interested third party in the form of a lawsuit to the Commercial Court on the grounds that the Trademark has not been used for 3 (three) consecutive years in the trade of goods and/or services since the date of registration or last use. However, there are some exceptions to that, namely:

1. If there is an import restriction on the goods bearing the Trademark to be cancelled;
2. The prohibitions related to the permission for the distribution of goods using the concerned Trademark, or a temporary decision from the authorized party are in place; or
3. There are other similar prohibitions established by Government Regulation.

 

We herewith provide you with 3 (three) most Frequently Asked Questions about the Trademark Non-Use Cancellation Actions in Indonesia:

1. The Trademark to be cancelled is yet to be registered. Can I file the petition to cancel it at the Trademark Office?

The Trademark Law explicitly states that only a registered Trademark can be cancelled based on non-use and the action can only be filed before the Court of Commerce. This practice is different in some countries where non-use cancellation action can be filed before the Trademark Office or the Trademark Board of Appeal.

 

2. Will the Defendant Bear the Burden of Proof?

The burden of proof lies on the plaintiff. Hence, the plaintiff must have all the required evidence to prove that the Trademark has indeed been not used for 3 consecutive years from the date of registration or the date of last use. 

 

3. Will the Plaintiff be Required to Provide a Non-Use Investigation Report?

The Trademark Law does not explicitly state the list of evidence to be provided to show if the Trademark has been used or not. However, in our practice, we generally always provide a complete investigation report to show that extensive online and offline research has been conducted (along with surveys). The issue that often comes up with this kind of investigation report is the geographical variability, which will contribute to the high costs associated with the report. 

 

Just to put it into a clearer perspective, Indonesia has more than 18 thousand islands. From our experience, it is possible that even after an investigation report has been done in major cities has been conducted, the defendant often still comes up with evidence of use for their sales that were done in remote parts of the country. However, please bear in mind that the Court of Commerce will not always deem a single use as sufficient evidence of use.

 

When possible, we generally advise our clients with other options before filing a non-use cancellation action, such as amicable settlement and bad-faith invalidation action, since both actions tend to have a higher degree of success compared to non-use cancellation action.

Should you require further information about non-use cancellation action in Indonesia, please do not hesitate to contact us at [email protected].