Since mid-2023, AFFA has been entrusted with handling disputes over the Marlin, Trademark owned by Trek Bicycle Corporation, headquartered in Waterloo, United States. Marlin is Trek’s Trademark for its flagship mountain bike frame.
In its home country, Marlin has been used since 1994 and was registered in 1998 at the United States Patent and Trademark Office (USPTO). However, when it was submitted for registration in 2021 via the Madrid Protocol addressed to Indonesia, this Mark was rejected by the Directorate General Intellectual Property (DGIP) as the Trademark Office in Indonesia because it was deemed to have similarities in its essence or its entirety with the registered identical Prior Mark owned by PT Astra Honda Motor since November 2006, and the protection period would have ended in November 2026.
Based on research conducted by independent investigators, it turned out that PT Astra Honda Motor had never used this Trademark for 3 (three) consecutive years from the date of registration or from the date of last use. Due to this fact, a petition to cancel the Marlin Trademark due to non-use was filed as regulated in Article 74 paragraph (1) of the Trademark and Geographical Indications Law (Trademark Law).
Despite an unfavorable decision at the Court of Commerce level, the team at AFFA filed a cassation to the Supreme Court on December 6 and submitted a cassation memo on December 19, 2023. It was finally decided in a deliberation meeting of the Panel of Judges on Tuesday, March 19, 2024, that the Commercial Court at the Central Jakarta District Court had misapplied the law and ordered the DGIP to remove the Marlin Trademark under the name of PT Astra Honda Motor.
The most important factor is that the Trademark has not been used in the last 3 (three) years based on the non-use investigation report submitted to the Court of Commerce. Apart from that, the similarity in essence or its entirety, an element of Trademark cancellation, does not need to be explained in the petition. Moreover, it is supported by the fact that the Cassation Respondent/Defendant never appeared at the hearings, even though they had been summoned 3 (three) times. Another helpful point that enhanced the chance of obtaining a favorable decision is the fact that Trek Bicycle Corporation also has registrations for the same Mark in various countries, such as Costa Rica, Guatemala, Nicaragua, Panama, Honduras and others.
Contrary to the popular belief that non-use cancellations in Indonesia are impossible, this decision by the Supreme Court is a proof that non-use cancellations are possible, provided that the plaintiff comes prepared with non-use investigation report and ample additional evidence which suggest legitimate interests in the same Mark.
Should you need more information about registering your Trademark in Indonesia or abroad, do not hesitate to email us at [email protected].
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