A registered trademark in Indonesia may still be challenged and cancelled through legal proceedings if there are sufficient grounds under Indonesian trademark law.
This issue may arise when a foreign company discovers that a trademark it has used in another country has been registered by another party in Indonesia. A dispute may also arise where a trademark was registered in bad faith, is similar to a well-known trademark, or falls within a category that should not have been registered under Indonesian law.
In these circumstances, Indonesian law provides a mechanism to challenge the registration through a trademark cancellation lawsuit before the Commercial Court.
Legal Basis for Trademark Cancellation in Indonesia
Trademark cancellation is governed by Law No. 20 of 2016 on Trademarks and Geographical Indications, as amended.
Article 76(1) provides that an interested party may file a lawsuit for the cancellation of a registered trademark based on the grounds stipulated in Article 20 and/or Article 21.
Article 76(3) further provides that a cancellation lawsuit shall be filed before the Commercial Court against the owner of the registered trademark.
Accordingly, determining whether a registered trademark can be cancelled requires an assessment of the grounds set out in Articles 20 and 21.
Grounds for Trademark Cancellation Under Article 20
Article 20 identifies trademarks that are not eligible for registration.
A trademark may therefore be challenged where it:
- Contravenes state ideology, laws and regulations, morality, religion, decency, or public order;
- Is identical to, related to, or merely describes the goods and/or services for which registration was sought;
- Contains elements that may mislead the public regarding the origin, quality, type, size, kind, or intended use of the relevant goods and/or services, or constitutes the name of a protected plant variety for similar goods and/or services;
- Contains information inconsistent with the quality, benefits, or efficacy of the goods and/or services;
- Lacks distinctive character; and/or
- Constitutes a generic name and/or a symbol belonging to the public domain.
Therefore, trademark cancellation does not necessarily require a conflict with another trademark owner. The characteristics of the registered trademark itself may provide grounds for challenging its registration.
Grounds for Trademark Cancellation Under Article 21
Article 21 addresses several additional grounds, particularly conflicts with earlier rights, well-known trademarks, protected signs, and bad-faith applications.
Under Article 21(1), a trademark application must be rejected if the trademark is substantially or entirely similar to:
- Another party’s registered trademark or an earlier-filed trademark application for similar goods and/or services;
- Another party’s well-known trademark for similar goods and/or services;
- Another party’s well-known trademark for dissimilar goods and/or services, subject to certain requirements; or
- A registered Geographical Indication.
Article 21(2) also provides for rejection where the trademark:
- Constitutes or resembles the name or abbreviation of a famous person, photograph, or name of a legal entity belonging to another party, unless written consent has been obtained from the entitled party;
- Imitates or resembles the name or abbreviation, flag, symbol, emblem, or insignia of a country or national or international institution, unless written consent has been obtained from the competent authority; or
- Imitates or resembles an official sign, seal, or stamp used by a state or government institution, unless written consent has been obtained from the competent authority.
Most importantly for many trademark disputes, Article 21(3) provides that an application shall be rejected if it was filed by an applicant acting in bad faith.
Trademark Cancellation Based on Bad Faith
Bad faith is one of the most important issues in Indonesian trademark cancellation litigation.
For example, a foreign company may have used a particular trademark in its business for years. A distributor, importer, agent, former business partner, or another party who was already aware of that trademark may subsequently register the same or a similar trademark under its own name in Indonesia.
The factual history between the parties may be particularly important in such a case.
The elucidation of Article 21(3) essentially describes a bad-faith applicant as an applicant who can reasonably be suspected of intending to imitate, copy, or follow another party’s trademark for its own business interests, thereby creating unfair business competition, deceiving, or misleading consumers.
Evidence of prior use, prior business relationships, knowledge of the foreign trademark, communications between the parties, and the circumstances surrounding the Indonesian registration may therefore become highly relevant.
Similarity alone does not necessarily establish bad faith. The factual history and supporting evidence should be carefully assessed.
Can a Foreign Trademark Owner File a Cancellation Lawsuit?
Potentially, yes.
Article 76(2) provides that the owner of an unregistered trademark may file a cancellation lawsuit after filing a trademark application with the Minister.
This provision can be particularly relevant to a foreign trademark owner who discovers that another party has already registered its trademark in Indonesia.
However, the claimant’s legal standing, trademark status, Indonesian application, grounds for cancellation, and available evidence should be assessed before litigation is commenced.
Time Limit for Filing a Trademark Cancellation Lawsuit
As a general rule, Article 77(1) provides that a trademark cancellation lawsuit may only be filed within five years from the date of registration.
There is an important exception.
Article 77(2) provides that a cancellation lawsuit may be filed without a time limit if there is an element of bad faith and/or if the trademark contravenes state ideology, laws and regulations, morality, religion, decency, or public order.
The trademark registration date and the grounds relied upon should therefore be reviewed at an early stage.
Where Is a Trademark Cancellation Lawsuit Filed?
A trademark cancellation lawsuit is not an ordinary civil claim.
Under Article 76(3), the lawsuit must be filed before the Commercial Court against the owner of the registered trademark.
Trademark cancellation is therefore an intellectual property litigation matter involving the preparation of pleadings, submission and examination of evidence, court hearings, and legal arguments establishing why the trademark registration should be cancelled.
What Evidence May Be Required?
The evidence required will depend on the grounds relied upon.
For foreign trademark owners, potentially relevant evidence may include foreign trademark registrations and filing history, evidence of prior use, invoices and sales records, product catalogues, advertising materials, media publications, websites, social media, product distribution records, distributor or agency agreements, correspondence between the parties, and evidence demonstrating the reputation and recognition of the trademark.
Where bad faith is alleged, evidence of the relationship between the claimant and defendant before the Indonesian trademark registration may become particularly important.
For example, where the defendant was previously the claimant’s distributor, distribution agreements, emails, invoices, purchase orders, correspondence, and other documents demonstrating that the defendant knew of the trademark before filing its Indonesian application may be relevant.
How to Cancel a Registered Trademark in Indonesia
The process will generally begin with reviewing the disputed trademark, its owner, registration date, relevant classes of goods or services, and registration history.
The next step is to assess whether sufficient grounds exist under Article 20 and/or Article 21 of the Trademark Law.
Once the legal grounds and evidence have been assessed, a trademark cancellation lawsuit may be prepared and filed before the competent Commercial Court.
The case then proceeds through court hearings and evidentiary proceedings until the Commercial Court renders its decision.
Under Article 78 of the Trademark Law, a cassation appeal may be filed against the Commercial Court’s decision in a trademark cancellation case.
Trademark Cancellation Lawyer in Indonesia – ILS Law Firm
ILS Law Firm provides legal representation for Indonesian and foreign clients in trademark disputes and trademark cancellation litigation in Indonesia.
Our legal services may include an initial assessment of the dispute, review of the trademark registration, analysis of cancellation grounds under Articles 20 and/or 21 of the Indonesian Trademark Law, evidence review, litigation strategy, preparation and filing of the lawsuit, representation before the Commercial Court, and further legal remedies where required.
Legal fees for trademark cancellation litigation start from USD 11,500. Final fees may vary depending on the complexity of the case, number of parties, volume of evidence, court location, and scope of legal representation required.
For consultation regarding trademark cancellation or trademark disputes in Indonesia, please contact:
ILS Law Firm
WhatsApp / Phone: +62 813-9981-4209
Email: info@ilslawfirm.co.id
