A prior registered Trademark can become a significant obstacle when a foreign brand owner intends to enter the Indonesian market, especially when it is filed earlier than when the actual owner files the Trademark in Indonesia.
Indonesia applies a first-to-file approach, meaning Trademark rights are principally obtained through application on a first-come, first-served basis. Consequently, if another party has already registered an identical or substantially similar trademark, the Directorate General of Intellectual Property (DGIP) may issue a provisional and final refusal against the Trademark application.
Depending on the circumstances, Indonesian Trademark law provides several mechanisms to challenge an earlier registration. Two of the most important are:
- Trademark invalidation based on bad faith; and
- Trademark cancellation based on non-use.
Although both actions may ultimately result in a Trademark being removed from the General Register of Trademarks by way of Court decision and further execution, they address fundamentally different legal problems.
Understanding the distinction matters for foreign companies whose Trademark applications in Indonesia are blocked by earlier registrations.
First-to-File Does Not Make Every Prior Registration Untouchable
Under Indonesian Trademark practice, an application may be rejected if it is substantially or entirely similar to an earlier registered Trademark or prior-filed application covering identical or similar goods or services.
The first-to-file principle therefore remains an important starting point.
A prior Trademark may potentially be challenged where, for example:
- it was registered by an applicant acting in bad faith; or
- it has remained unused in Indonesia for the statutory non-use period.
These circumstances lead to different causes of action.
A foreign Trademark owner should therefore not immediately conclude that rebranding is required simply because an Indonesian Trademark search identifies an earlier conflicting registration.
#1. Bad-Faith Trademark Invalidation
Bad-faith Trademark invalidation focuses primarily on the circumstances surrounding the registration of the disputed Trademark.
Article 21(3) of Law No. 20 of 2016 on Trademarks and Geographical Indications provides that a Trademark application shall be rejected where it was filed by an applicant acting in bad faith. In accordance with the elucidation, the term “Applicant acting in bad faith” refers to an Applicant who may reasonably be suspected of having the intention, in registering its Mark, to imitate, reproduce, or follow another party’s Mark for the purpose of advancing its business interests, thereby creating unfair business competition or misleading or confusing consumers.
Meanwhile, Article 76 allows an interested party to bring an invalidation action against a registered Trademark based on the grounds contained in Articles 20 and/or 21. The issue is therefore not merely whether the defendant registered first.
The court may examine whether the circumstances indicate that the registrant intentionally imitated, copied, or followed another party’s Trademark for its own commercial benefit, particularly where such conduct may create unfair competition, deceive consumers, or mislead the public.
What Must Be Proven?
Bad faith is inherently fact-sensitive. Similarity between two Trademarks may be important, but similarity alone does not automatically establish bad faith.
Depending on the case, relevant evidence may include:
- earlier Trademark registrations in other jurisdictions filed before the filing date of the Indonesian application filed by the counter party;
- evidence showing long-standing use of the Trademark before the Indonesian filing;
- evidence of international or regional market presence;
- similarities in the Trademark’s wording, pronunciation, logo, typography, colors, or other distinctive elements;
- evidence demonstrating that the Indonesian registrant knew or reasonably should have known of the foreign Trademark;
- previous commercial, distribution, agency, manufacturing, employment, or other relationships between the parties;
- evidence of copying of product presentation or branding;
- market circumstances indicating an intention to take advantage of another party’s reputation; and
- other evidence capable of demonstrating intentional imitation or unfair conduct.
The evidentiary strategy is therefore very different from a non-use action.
In a bad-faith case, the claimant is effectively reconstructing why and under what circumstances the defendant obtained the registration.
Bad Faith Can Override the Practical Effect of First-to-File
Our representation of Guangzhou Sanwich Biology Technology Co., Ltd. in relation to the SEVICH Trademark illustrates this distinction.
SEVICH had originally been registered by our client in China in 2016 and subsequently registered in several other jurisdictions.
Before entering Indonesia, however, the company discovered that an identical SEVICH Trademark, with corresponding wording, pronunciation and logo, had already been registered by another party in Indonesia in the same class.
The Indonesian registrant relied on its earlier Indonesian filing and argued that, as the first registrant, it possessed the exclusive Trademark rights in Indonesia.
AFFA subsequently filed an invalidation action before the Commercial Court at the Central Jakarta District Court, under Case No. 25/Pdt.Sus-HKI/Merek/2024/PN.Niaga.Jkt.Pst.
On June 11, 2024, the Court granted the action and found, among other things, that the disputed registration contained substantial similarity and had been registered in bad faith. The Court ordered DGIP to invalidate the registration and remove it from the General Register of Trademarks.
The case demonstrates an important point for foreign businesses:
- first-to-file is important, but it is not an absolute shield for a registration obtained in bad faith.
The D-Nee Case: A Similar Issue More Than Two Decades Later
A more recent example can be seen in our representation of Neo Factory Co., Ltd. of Thailand concerning the D-Nee Trademark. The original Trademark had been registered in Thailand as early as May 15, 1997 and was subsequently registered and used in several jurisdictions.
More than two decades later, on December 19, 2018, another party filed a substantially similar Trademark in Indonesia, which ultimately obtained registration in December 2020.
AFFA filed an invalidation action on behalf of the original Trademark owner before the Central Jakarta Commercial Court on December 23, 2024.
Although the Commercial Court initially rejected the claim, AFFA pursued the matter before the Supreme Court. In Decision No. 1337 K/Pdt.Sus-HKI/2025 jo. No. 125/Pdt.Sus-Merek/2024/PN.Niaga.Jkt.Pst, the Supreme Court granted the cassation petition.
Among its findings, the Supreme Court considered that the Indonesian Trademark had substantial similarity to the original Trademark and that the registration had been made in bad faith, with the potential to create unfair competition and mislead consumers.
The Indonesian registration was consequently declared invalid and ordered to be removed from the General Register of Trademarks. The case also illustrates another particularly important feature of bad-faith invalidation.
Is There a Time Limit for a Bad-Faith Invalidation Action?
Generally, Article 77(1) of the Trademark Law provides a five-year limitation period from the date of registration for an invalidation action.
However, Article 77(2) provides an important exception. Where the registration involves bad faith, an invalidation action may be filed without a time limitation. The same exception applies to certain registrations contrary to state ideology, laws and regulations, morality, religion, decency, or public order.
This distinction can be extremely important for an overseas Trademark owner who discovers an Indonesian registration years after it was obtained. The age of the registration does not, by itself, prevent a bad-faith challenge where sufficient evidence exists.
#2. Non-Use Trademark Cancellation
Non-use cancellation addresses a completely different question. It does not primarily examine why the Trademark was registered.
Instead, it asks:
“Has the registered owner actually used the Trademark in Indonesia?”
Article 74 of the Trademark Law permits an interested third party to seek deletion of a registered Trademark before the Commercial Court where the Trademark has not been used continuously for the prescribed statutory period in the trade of goods and/or services.
Importantly, that period is now five consecutive years. On July 30, 2024, the Constitutional Court issued Decision No. 144/PUU-XXI/2023, changing the period under Article 74(1) from three consecutive years to five consecutive years from the date of registration or last use.
Older Indonesian decisions and materials may therefore still refer to the previous three-year rule. Foreign Trademark owners should not rely on that earlier threshold for current cases.
Bad Faith Is Not Required in a Non-Use Action
This is perhaps the clearest distinction between the two mechanisms. In a non-use case, it is generally unnecessary to establish that the owner copied another Trademark or acted dishonestly when obtaining the registration.
The registration may have been legitimate when originally filed. The issue arises because the registered owner subsequently failed to use the Trademark for the statutory period.
A successful non-use action is therefore directed against an inactive registration, rather than necessarily against wrongful conduct during the original filing process.
Evidence Becomes the Critical Issue
Because non-use is the central issue, market investigation becomes extremely important. Before commencing proceedings, a foreign Trademark owner should normally assess whether credible evidence can be obtained showing that the disputed Trademark has not genuinely been used in Indonesia.
Depending on the relevant products or services, an investigation may consider:
- physical retail outlets;
- distributors and wholesalers;
- Indonesian e-commerce platforms;
- company websites;
- advertising activities;
- product catalogues;
- marketplace listings;
- industry-specific distribution channels;
- business directories;
- social media;
- import and circulation information where available; and
- other evidence relevant to actual commercial use.
The Constitutional Court itself emphasized that a finding of non-use should be supported by adequate information, including clear, measurable, transparent and accountable investigation or survey data.
This means that simply stating that a Trademark “cannot be found in the market” may be insufficient.
A properly planned investigation can become one of the most important components of a non-use cancellation strategy.
AFFA’s MARLIN Case: Removing an Unused Blocking Trademark
AFFA represented TREK BICYCLE CORPORATION in a non-use cancellation action against the MARLIN Trademark under Registration No. IDM000168136, registered in the name of PT Astra Honda Motor.
The existence of the earlier MARLIN registration constituted an obstacle to TREK BICYCLE CORPORATION’s protection of its MARLIN Trademark in Indonesia. AFFA therefore commenced a non-use cancellation action before the Commercial Court at the Central Jakarta District Court under Case No. 70/Pdt.Sus/Merek/2023/PN.Niaga.Jkt.Pst.
At the first-instance level, the Commercial Court declared the lawsuit inadmissible (niet ontvankelijk verklaard). AFFA subsequently pursued the matter through the cassation stage.
On March 19, 2024, the Supreme Court, in Decision No. 396 K/Pdt.Sus-HKI/2024, ruled in favour of TREK BICYCLE CORPORATION and overturned the first-instance decision.
This case demonstrates how non-use cancellation proceedings can provide an effective legal avenue for a foreign Trademark owner facing an earlier Indonesian registration, without necessarily requiring the claimant to establish that the earlier Trademark was originally registered in bad faith. The central issue in such proceedings is whether the registered Trademark has been genuinely used in accordance with the applicable statutory requirements.
The PRINT ONE Case
AFFA subsequently represented APRIL International Enterprise Pte. Ltd., owner of the PAPER ONE brand, in another non-use proceeding.
APRIL had filed an application for PRINT ONE under Application No. DID2021062992, but its application encountered an earlier PRINT ONE registration owned by PT Daksa Sinergi. An independent investigation indicated that the earlier Trademark had not been commercially used for the applicable period.
AFFA commenced proceedings before the Central Jakarta Commercial Court in April 2024. The Commercial Court ultimately granted the action and ordered the earlier PRINT ONE registration to be removed from the General Register of Trademarks.
Both MARLIN and PRINT ONE demonstrate why a Trademark search should not stop after identifying an earlier conflicting registration.
A registration appearing in the DGIP database establishes an important legal obstacle, but further investigation may reveal whether that registration remains vulnerable to a non-use action.
Not Every Period of Non-Use Makes a Trademark Vulnerable
The Trademark Law also recognizes circumstances in which non-use may be excused. Under Article 74(2), relevant circumstances include:
- a prohibition on imports;
- restrictions connected with authorization for the circulation of goods bearing the relevant Trademark or temporary decisions issued by competent authorities; and
- other similar prohibitions, now expressly including force majeure within the interpretation established by the Constitutional Court.
Consequently, an investigation should not only ask whether products bearing the Trademark can be located. It should also consider whether there is a legally recognizable explanation for the apparent absence of use.
Bad-Faith Invalidation vs Non-Use Cancellation: Key Differences
| Issue | Bad-Faith Invalidation | Non-Use Cancellation |
| Primary question | Was the Trademark registered in bad faith? | Has the Trademark actually been used in Indonesia for the last 5 years from the date of last use or registration? |
| Main legal basis | Articles 21(3), 76 and 77 | Article 74 |
| Conduct examined | Conduct and circumstances surrounding registration | Use or non-use after registration |
| Need to prove copying or dishonest intention? | Generally central to the bad-faith argument | No |
| Need to prove non-use? | No | Yes |
| Relevant historical foreign registrations | Often highly relevant | May establish legitimate interest, but do not prove non-use |
| Market investigation | May support the overall case | Extremely critical and important |
| General limitation period | None | Action becomes available after statutory non-use period of five years from the date of last use or registration |
| Bad-faith exception to limitation period | No time limitation where bad faith is established | Not applicable |
| Current statutory non-use period | Not applicable | Five consecutive years |
| Main objective | Attack an improperly obtained registration | Remove a registration that is no longer genuinely used |
Which Action Should a Foreign Trademark Owner Consider?
Suppose a foreign company conducts a clearance search before launching in Indonesia and discovers an identical earlier Trademark. The correct response depends on the evidence.
Scenario 1: The Earlier Registrant Appears to Have Copied the Foreign Brand
Assume the foreign company has used its distinctive Trademark internationally for many years, while an Indonesian party later registers an almost identical name, logo and product presentation.
There is evidence suggesting that the Indonesian registrant knew of the original Trademark. In such circumstances, bad-faith invalidation may warrant consideration.
Historical Trademark registrations, evidence of reputation, prior relationships between the parties and circumstances surrounding the Indonesian filing may become critical.
Scenario 2: The Earlier Trademark Appears Completely Inactive
Alternatively, assume the earlier Trademark was legitimately registered many years ago, but investigation reveals no genuine commercial activity involving the Trademark in Indonesia for more than five consecutive years.
There may be no evidence whatsoever of copying or bad faith. A non-use cancellation action may be the more relevant mechanism.
Scenario 3: There May Be Both Bad Faith and Non-Use
Some cases may present evidence supporting both theories. For example, an Indonesian party may have copied a foreign Trademark and subsequently never genuinely commercialized it. This does not mean that both actions should automatically be pursued.
The appropriate litigation strategy should consider the available evidence, registration dates, use history, procedural circumstances and the foreign owner’s broader Indonesian Trademark portfolio.
An Unregistered Foreign Trademark Owner Should Also Consider Its Own Indonesian Filing
Another important procedural issue arises when the foreign Trademark owner itself does not yet own an Indonesian registration. Article 76(2) provides that an owner of an unregistered Trademark may bring an invalidation action after filing its own application with the Minister. This closely links filing strategy and litigation strategy.
Foreign owners should therefore avoid treating the challenge against the blocking Trademark as an isolated proceeding. The ultimate objective is normally not merely to remove another party’s registration. It is to establish a clear path toward securing and maintaining the foreign owner’s own Trademark rights in Indonesia.
A Trademark Search Is Only the Beginning
For foreign companies, one of the most important lessons is that an adverse Trademark search result should trigger further legal analysis rather than an immediate decision to abandon the brand.
When a conflicting registration is discovered, several questions should be investigated:
- Who registered it?
- When was it registered?
- Was the foreign Trademark already in use elsewhere at that time?
- Is there any previous relationship between the parties?
- How similar are the marks and their commercial presentation?
- Is the registered Trademark actually being used in Indonesia?
- When was it last used?
- Has the five-year non-use period been satisfied?
- Could any statutory exception explain the absence of use?
Only after assessing these issues can the appropriate challenge mechanism be identified.
Conclusion: Same Result, Different Legal Route
Bad-faith invalidation and non-use cancellation may produce a similar practical result: the removal of a problematic Trademark registration from the Indonesian Trademark register.
Legally, however, they are fundamentally different. Bad-faith invalidation concerns the legitimacy of the registration itself.
The claimant seeks to establish that the registrant should not have obtained or maintained the registration because it was secured in bad faith. Where bad faith is established, Indonesian law permits an invalidation action without the ordinary five-year limitation period.
Non-use cancellation concerns what happened after registration. The issue is whether the Trademark has actually been used in Indonesian commerce for the relevant goods or services. Following Constitutional Court Decision No. 144/PUU-XXI/2023, the current statutory threshold is five consecutive years of non-use.
For foreign Trademark owners facing an earlier Indonesian registration, determining the correct mechanism requires more than examining the DGIP database. It may require an assessment of the registration history, international Trademark portfolio, commercial relationships, market activity, and carefully documented investigation evidence.
AFFA Intellectual Property Rights has represented overseas Trademark owners in both bad-faith invalidation and non-use cancellation proceedings before the Indonesian Commercial Courts and Supreme Court, including matters involving D-Nee, SEVICH, MARLIN, and PRINT ONE.
For international companies and foreign IP counsel facing a blocking Trademark registration in Indonesia, early assessment of the available evidence can help determine whether the registration should be challenged for bad faith, non-use, or another available legal ground before significant resources are committed to rebranding or market entry.
Should you need more information about bad-faith invalidation and/or non-use cancellation, contact us through the channels below and receive a FREE 15-minute consultation:
📩 E-Mail : [email protected]
📳 Book a Call : +62 21 83793812
💬 WhatsApp : +62 812 87000 889
About AFFA:
Established in 1999, AFFA Intellectual Property Rights is an Indonesia-based boutique IP law firm serving international brands and innovators, offering full-service support—from prosecution and licensing to enforcement and commercialization—in Indonesia’s dynamic IP landscape. Our firm is widely recognized for its excellence, with accolades including “Best Boutique Law Firm in Indonesia” and “IP Enforcement Firm” at the Indonesia Law Firm Awards 2025 by Asia Business Law Journal, as well as being listed as a “Recommended Firm 2024 — Indonesia” by WTR 1000: The World’s Leading Trademark Professionals.
