AFFA Represents APRIL International Enterprise Pte. Ltd. to Win a Trademark Non-Use Cancellation Action in Indonesia - AFFA IPR

AFFA Represents APRIL International Enterprise Pte. Ltd. to Win a Trademark Non-Use Cancellation Action in Indonesia

Intellectual Property, Trademark

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.   You might also want to read: AFFA Represents Trek Bicycle to Win a Trademark Non-Use Cancellation Action in Indonesia 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].

A Win for the WIN - AFFA Represents Hongyunhonghe Tobacco for a Successful Trademark Non-Use Cancellation in Indonesia

A Win for the “WIN” – AFFA Represents Hongyunhonghe Tobacco (Group) Co. Ltd. for a Successful Trademark Non-Use Cancellation in Indonesia

Event, Intellectual Property, Trademark

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.    You might also want to read: AFFA Represents Trek Bicycle to Win a Trademark Non-Use Cancellation Action in Indonesia 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].