In today’s increasingly competitive business environment, Trademark protection is a key factor in maintaining a company’s identity and competitive advantage. However, Trademark registration often faces obstacles due to the existence of previously registered Trademarks that, in reality, are not being used. This was the case with PRINT ONE, where AFFA successfully represented APRIL International Enterprise Pte. Ltd., the owner of the well-known brand PAPER ONE, in winning a Trademark non-use cancellation action against PRINT ONE, which had long been unused in Indonesia, based on prior investigation results.
The case began when APRIL International Enterprise Pte. Ltd. filed a Trademark application for “PRINT ONE” under Application Number DID2021062992 with the Directorate General of Intellectual Property (DGIP) in 2021. However, the application was rejected by DGIP because it was considered similar to the “PRINT ONE,” which had been registered under PT Daksa Sinergi since May 12, 2020.
An independent investigation revealed that the PRINT ONE Trademark had never been used in commerce for over three years since its registration. Based on these findings, AFFA filed a trademark non-use cancellation action with the Central Jakarta Commercial Court in April 2024.
Legal Basis for Trademark Non-Use Cancellation Action
This action was filed under Article 74, Paragraph (1) of Law No. 20 of 2016 on Trademarks and Geographical Indications, which states that a Trademark that has not been used for three consecutive years from the date of registration may be canceled upon request by an interested party.
During the trial, PT Daksa Sinergi failed to appear, despite being legally summoned. This further strengthened the evidence that the Trademark was not actively used in the market.
Court Decision
After a series of hearings, in October 2024, the Central Jakarta Commercial Court finally granted the lawsuit filed by AFFA. In its ruling, the court declared that:
- The plaintiff has a legal interest in filing the Trademark non-use cancellation action.
- The PRINT ONE Trademark owned by PT Daksa Sinergi is officially removed from the General Register of Trademarks.
- DGIP is ordered to revoke the Trademark and announce its removal in the Official Trademark Gazette.
- PT Daksa Sinergi is required to pay court fees amounting to IDR 8,820,000.
This decision marks a significant victory for APRIL International Enterprise Pte. Ltd., which can now reapply for its Trademark registration in Indonesia without any obstacles.
Lessons from the PRINT ONE Trademark Cancellation Case in Indonesia
This case is a clear example that a non-use Trademark can be canceled, even if it is still officially registered. Therefore, Trademark owners should take note of these three key factors:
- Ensure that your registered Trademark is actively used in Indonesia. If not, other parties may file for cancellation.
- If an unused Trademark blocks your Trademark, legal solutions are available. Trademark cancellation is one of the strategies to pave the way for a new Trademark registration.
- Entrust your Trademark registration to an experienced Intellectual Property Consultant to ensure your brand is properly protected in Indonesia.
Current Trademark Cancellation Practice in Indonesia
However, it is important to note that following the Constitutional Court Decision No. 144/PUU-XXI/2023, a Trademark can now only be canceled if it has not been used for five consecutive years from the date of registration.
Additionally, a Trademark cannot be canceled if:
- There is a ban on importing goods or services that use the Trademark.
- There are licensing restrictions related to the goods or services associated with the Trademark.
- The Trademark cannot be used due to a force majeure situation.
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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].
