Indonesia generally follows a first-to-file trademark system. This means that trademark registration plays a central role in determining legal protection.
However, first-to-file does not mean that every registered trademark automatically becomes immune from challenge.
Indonesian trademark law gives special protection to well-known trademarks. In certain circumstances, the owner of a well-known trademark that has not yet been registered in Indonesia may still challenge and seek cancellation of a trademark that another party has already registered in Indonesia.
This issue often arises when an international brand discovers that another party has registered an identical or highly similar trademark in Indonesia before the original brand owner entered the Indonesian registration system.
Indonesian law provides a legal route to address this situation.
Can an Unregistered Well-Known Trademark File a Cancellation Lawsuit?
Yes. Article 76 of Law No. 20 of 2016 on Trademarks and Geographical Indications expressly regulates cancellation lawsuits against registered trademarks.
Article 76 paragraph (1) states that an interested party may file a lawsuit to cancel a registered trademark based on the grounds contained in Article 20 and/or Article 21.
More importantly, Article 76 paragraph (2) specifically recognizes the position of an unregistered trademark owner. It allows the owner of an unregistered trademark to file a cancellation lawsuit after submitting a trademark application to the Minister.
Article 76 paragraph (3) then states that the cancellation lawsuit must be filed with the Commercial Court against the owner of the registered trademark.
Therefore, an overseas trademark owner does not necessarily lose every legal remedy simply because its trademark has not yet been registered in Indonesia.
The law expressly provides a route for an unregistered trademark owner to challenge an existing registration.
Why Does Indonesian Law Protect Well-Known Trademarks?
The protection comes primarily from Article 21 of the Trademark Law.
Article 21 paragraph (1)(b) provides that a trademark application must be refused if it has similarity in its essential part or in its entirety with a well-known trademark owned by another party for similar goods and/or services.
Article 21 paragraph (1)(c) also extends protection to well-known trademarks for dissimilar goods and/or services, subject to certain requirements.
Because Article 76 expressly allows cancellation based on Article 21, the owner of a well-known trademark may rely on the status and reputation of its mark as a substantive ground for challenging a later registration.
This creates an important exception to a purely mechanical interpretation of first-to-file.
The registration system protects legitimate first applicants, but it does not necessarily protect someone who registers a mark that conflicts with an established well-known trademark.
What Does “Well-Known Trademark” Mean in Indonesia?
A trademark does not become well known simply because its owner calls it famous.
The owner must prove its reputation.
Article 18 of Minister of Law and Human Rights Regulation No. 67 of 2016 provides criteria for determining whether a trademark qualifies as well known.
Authorities may consider factors such as:
- public knowledge or recognition of the trademark in the relevant business sector;
- sales volume and profits generated from use of the trademark;
- market share;
- geographical scope of use;
- duration of use;
- intensity of promotion and advertising investment;
- trademark registrations or applications in other countries; and
- the history of successful trademark enforcement.
The regulation focuses on actual reputation, market recognition, commercial presence, promotion, and international registration history.
This means that the plaintiff should prepare evidence carefully before filing a cancellation claim.
Does the Trademark Need to Be Registered in Indonesia First?
Not necessarily.
This is one of the most important aspects of Article 76.
The owner of an unregistered trademark may still file a cancellation lawsuit. However, Article 76 paragraph (2) requires that owner to first submit a trademark application to the Minister.
In practical terms, an overseas owner of a well-known trademark should not simply arrive at the Commercial Court without taking any registration step in Indonesia.
The owner should first file its own trademark application and then pursue the cancellation action if the legal requirements are satisfied.
This structure reflects a balance.
Indonesia maintains a registration-based system, but the law still allows an unregistered owner to protect a well-known mark against an earlier registration that conflicts with its rights or reputation.
Where Must the Cancellation Lawsuit Be Filed?
The lawsuit must be filed with the Commercial Court.
Article 76 paragraph (3) clearly provides that a cancellation lawsuit must be brought before the Commercial Court against the owner of the registered trademark.
This distinction matters because cancellation is not simply an administrative request to DJKI.
DJKI itself has emphasized that cancellation of an existing trademark registration takes place through a cancellation lawsuit before the court. DJKI implements the final court decision by cancelling and removing the trademark from the General Register of Trademarks.
Therefore, a well-known trademark owner seeking cancellation must prepare for litigation rather than relying only on an administrative complaint.
What Must the Plaintiff Prove?
A plaintiff normally needs to establish several important points.
First, the plaintiff must show that it owns or controls the earlier well-known trademark.
Second, the plaintiff must prove that the trademark has acquired sufficient reputation to qualify as a well-known mark.
Third, the plaintiff should demonstrate similarity between the disputed Indonesian registration and the well-known trademark.
The court may examine similarities in wording, pronunciation, visual appearance, dominant elements, overall impression, or other relevant characteristics.
Fourth, the plaintiff should explain the relationship between the goods or services involved.
For similar goods or services, Article 21 paragraph (1)(b) directly addresses well-known trademarks.
For dissimilar goods or services, Article 21 paragraph (1)(c) may become relevant, subject to the applicable conditions.
Finally, depending on the facts, the plaintiff may also argue that the defendant acted in bad faith.
Why Is Bad Faith Important?
Bad faith can significantly strengthen a cancellation case.
A party may face allegations of bad faith when it intentionally registers another party’s established trademark to benefit from its reputation, create an association with the famous brand, block the legitimate owner from entering Indonesia, or obtain a commercial advantage from the earlier mark’s goodwill.
Indonesian trademark law also gives bad faith special importance in relation to the time limit for cancellation actions.
Article 77 paragraph (1) generally provides a five-year period from the registration date for filing a cancellation lawsuit.
However, Article 77 paragraph (2) allows a cancellation action to be filed without a time limit when bad faith exists or when the trademark conflicts with certain fundamental legal or public-order principles.
For an international brand that discovers an Indonesian registration many years later, this issue may become particularly important.
Can a Famous Foreign Brand Win Even If It Never Registered in Indonesia?
Potentially, yes. The absence of an Indonesian registration does not automatically prevent the foreign trademark owner from bringing a cancellation action.
DJKI has publicly explained that the owner of a well-known trademark may seek cancellation when another party registers and misuses that famous trademark in a country where the original owner had not yet obtained protection.
However, this does not mean that every foreign trademark automatically wins.
The plaintiff still needs to establish the trademark’s well-known status and satisfy the procedural requirements under Indonesian law.
A claimant with little evidence of reputation, limited sales, minimal promotion, or weak international recognition may face difficulties.
What Happens If the Commercial Court Grants the Lawsuit?
If the Commercial Court grants the cancellation claim and the decision becomes legally enforceable, the disputed registration can be cancelled and removed from the trademark register.
DJKI has confirmed in recent cancellation matters that it implements final court judgments by issuing the necessary administrative decision and removing the cancelled mark from the General Register of Trademarks.
The defendant may also pursue the available legal remedy against the Commercial Court decision.
Article 78 of the Trademark Law provides for cassation against a Commercial Court judgment in a trademark cancellation case.
Therefore, trademark cancellation litigation can continue beyond the first-instance Commercial Court judgment.
What Should a Foreign Trademark Owner Do?
A foreign trademark owner that discovers an identical or similar Indonesian registration should act carefully and strategically.
The owner should first confirm the legal status of the Indonesian registration and review the goods or services it covers.
It should then collect evidence proving the history, reputation, international registrations, use, advertising, and market recognition of the well-known trademark.
Because Article 76 paragraph (2) requires an unregistered trademark owner to submit its own application before filing the cancellation lawsuit, the owner should also address the Indonesian filing requirement.
After completing those steps, the owner may evaluate whether it has sufficient grounds to bring a cancellation claim before the Commercial Court.
Trademark Cancellation and Dispute Assistance in Indonesia
ILS Law Firm provides legal consultation and assistance for trademark disputes in Indonesia, including disputes involving registered trademarks, well-known trademarks, alleged bad-faith registrations, and trademark cancellation proceedings.
We can assist clients in reviewing the disputed registration, examining potential grounds under Articles 20, 21, 76, and 77 of the Indonesian Trademark Law, preparing litigation strategy, and representing clients in trademark disputes before the Commercial Court.
We also provide consultation and assistance for trademark registration in Indonesia where a client needs to file its own trademark application as part of a broader protection strategy.
Clients may arrange an online consultation through Zoom, Google Meet, or telephone call. Offline consultations can also be arranged through a direct meeting with the ILS Law Firm team.
Telephone/WhatsApp: +62 813-9981-4209
Email: info@ilslawfirm.co.id
