When your Trademark Registration application is rejected in Indonesia, it is often due to the existence of another prior Trademark with the same elements that have been registered in the same class with the Directorate General of Intellectual Property (DGIP). Since Indonesia applies the first-to-file principle, if you register the same Trademark after another Trademark that has been filed or registered earlier, you must consider alternative options to prevent a potential rejection by the DGIP.
The dilemma usually arises when there is an identical prior Trademark that gets in the way of a successful registration, but you have no other option but to still keep using the identical Trademark for business purposes in Indonesia. At times, rebranding exercise costs more than any potential legal action that may be required to cancel a prior Mark due to non-use. In this scenario, the latter should be considered.
As stated in Article 74 of the Trademark and Geographical Indications Law (Trademark Law), an interested third party can apply for cancellation of a registered Trademark in the form of attack legally on the grounds of non-use to the Court of Commerce if the Mark has not been used for trade in goods and/or services for 3 (three) consecutive years from the date of registration or last use.
Therefore, if we can prove that the Trademark is genuinely not in use after a thorough investigation, the Court of Commer can cancel a registered Trademark upon request of an interested third party.
Since 2022, AFFA has been trusted by Hongyunhonghe Tobacco (Group) Co. Ltd., which originates from the People’s Republic of China to manage its Intellectual Property in Indonesia, one of which is the WIN Trademark in class 34 which includes types of cigarette filters, filters for cigarettes, lighters, liquid solutions for use in electronic cigarettes, lighters for smokers, flavorings other than oil essentials for tobacco, cigarettes, electronic cigarettes, snuff and hand-rolling tobacco.
However, based on initial searches, there is already a WIN Trademark under registration no. IDM000030697 in the same class owned by PT Sumatra Tobacco Trading Company (STTC) of North Sumatra, Indonesia. Under normal conditions, of course, the client’s chance to register WIN is low because it will be rejected as regulated in Article 21 paragraph (1) letter (a) of the Trademark Law, which states that a Trademark application is rejected if the Trademark has similarities in essence or its entirety with the registered Trademark owned by the other party for similar goods and/or services.
Previously, the WIN Trademark of Hongyunhonghe Tobacco had been registered in China, the European Union, Australia, Brazil, Mexico, South Korea, Cambodia, Vietnam, and even Singapore since 2009. This fact alone already constitutes the definition of “an interested party” as regulated by Article 74 of the Trademark Law.
After the investigation process was carried out, it was found that STTC had not used the Trademark for 3 consecutive years from the date of registration or from the date of last use. Consequently, the petition for cancellation was filed to the Commercial Court – Central Jakarta District Court on September 14, 2023, as regulated in Article 76 paragraph (1) of the Trademark Law. Unfortunately, the Court of Commerce decided to reject the petition. Therefore, the next step was to file a cassation to the Supreme Court on September 27, 2023.
The Supreme Court of the Republic of Indonesia finally decided that the Central Jakarta District Court had misapplied the law, granted our cassation request on January 25, 2024, while canceling the Commercial Court’s decision, and asked DGIP to register the cancellation of the WIN Trademark registration from the General Register of Trademarks and announce it in the Official Trademark Gazette.
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This success story is a testament that with thorough preparation and investigation, a non-use cancellation action is possible in Indonesia. Should you need more information about Trademark registration and protection in Indonesia or abroad, please email us at [email protected].
