By Putu Doni WD.
In the current global trade of goods and services, having a trademark is a crucial element for businesses. Among other things, a trademark serves as something to identify with, particularly when it comes to promotional material or as a source of products. Given how significant a trademark is in commercial activity, if you’re the owner of one, you should consider seeking legal protection on the trademark to avoid any harm that may affect your business in the years to come.
Trademark protection in Indonesia comes after registration, as mentioned in Article 3 of Law No. 20 of 2016 on Mark and Geographical Indication (MGI), which regulates that Rights on a Mark are derived following registration; that’s why it’s so important to have your trademark registered.
However, it’s important to also note that a registered trademark can be revoked by a third party if the trademark in question hasn’t been used for a long time. For a trademark to be revoked there has to be the filing of a lawsuit in Commercial Court, where the plaintiff will have the burden of proof to show that a registered trademark has not been in use for three consecutive years from the date of registration, or from its last use (Article 74 Sub 1 of Law on MGI).
A non-use cancellation is not applicable if the following conditions occur:
- Import embargo,
- Restrictions in connection with the permits of product distribution using the respective Trademark or a temporary decision from an authorized institution, or,
- Other similar restrictions stipulated with Government Regulation (Article 74 Sub 2 of Law on MGI.)
An example of a non-use cancellation case can be seen in Decision Number 21/Merek/2012/ PN.NIAGA.JKT.PST, between PT. Cakra Eka Mulia as the Plaintiff and Hengki Arifin as the Defendant.
The Defendant was the proprietor of a Trademark with registration number IDM000159262 that was registered in class 30 on April 16th, 2008.
The Plaintiff in one of its arguments stated that “the Defendant never used its registered trademark for three years consecutively.”
After taking everything into account, the Commercial Court at the Central Jakarta District Court finally took a decision and stated that the defendant’s registered trademark was not in use for three consecutive years in trade activity of goods and/ or services since the date it was registered.
As a result, the Court decided to revoke the respective registered trademark and instructed the Indonesia Trademark Office (TMO) to announce it in the Trademark Gazette.
Against this decision, the Defendant filed an appeal to the Indonesia Supreme Court, but it was rejected (Supreme Court Decision Number 754 K/Pdt.Sus/2012).
The bottom line is that Trademarks do not last forever, so if you’ve gone to the trouble of registering one, you should make every effort to use it. If you don’t, for whatever reasons, you can be challenged in court and your rights to it can be legally revoked.
- Law No.20 of 2016 on Mark and Geographical Indication;
- Commercial Court at Central Jakarta District Court Decision Number 21/Merek/2012/ PN.NIAGA.JKT.PST;
- Supreme Court Decision Number 754 K/Pdt.Sus/2012.