Trademark cancellation and deletion in Indonesia are now governed by Law No. 20 of 2016 on Marks and Geographical Indications (replacing Law No. 15 of 2001). Two common routes are as follows.
1. Deletion for non-use (Commercial Court)
Under Article 74 of Law No. 20 of 2016, an interested third party may sue in the Commercial Court to delete a registered mark that has not been used for three consecutive years in trade of the goods and/or services, counted from the registration date or the last use. Exceptions apply where non-use is caused by an import ban, a temporary restriction on distribution of goods bearing the mark, or other similar restrictions set by government regulation.
Note: under the 2016 law, non-use deletion is a third-party Commercial Court action. Ministerial initiative deletion under Article 72 covers other grounds (for example conflict with a geographical indication, or conflict with state ideology, law, morality, religion, or public order), not the three-year non-use ground that was framed as a Directorate General initiative under the old Article 61 of Law No. 15 of 2001.
Non-use suits are still uncommon in practice, partly because proving continuous non-use in the Indonesian market is difficult. That does not mean a well-prepared action cannot succeed.
Typical documents for a non-use action include:
- A notarized and legalized Power of Attorney;
- Articles of Association of the company (if the plaintiff is a company);
- Evidence of non-use of the adverse party’s trademark.
It is usually wise to investigate actual market use in Indonesia before filing. Investigation results help decide whether to proceed and how to frame the claim.
2. Invalidation based on a well-known mark and/or bad faith
Under Article 76 of Law No. 20 of 2016, an interested party may sue in the Commercial Court to invalidate a registered mark on the grounds in Article 20 and/or Article 21. Article 21 covers, among other things, marks that are identical or similar to a well-known mark of another party (for similar goods/services, and in some cases for dissimilar goods/services), and applications filed in bad faith. An owner of an unregistered mark may sue only after filing an application with the Minister.
Under Article 77, an invalidation suit must generally be filed within five years of registration, except that there is no time limit where bad faith is shown and/or the mark conflicts with state ideology, law, morality, religion, decency, or public order.
Typical documents for an invalidation action include:
- A notarized and legalized Power of Attorney;
- A notarized worldwide list of the client’s relevant trademark registrations;
- Original trademark registration certificates, ideally in several countries including the home country;
- Brochures and advertisements;
- Articles of Association of the company (if the plaintiff is a company);
- Evidence as the prior user of the relevant mark;
- Samples of products bearing the mark;
- Name and address of the client’s distributor or agent in Indonesia, if any;
- English translations of the foreign trademark certificates.
The Power of Attorney should be notarized and legalized by the Indonesian Consulate in the applicant’s country, and should be available at filing.
A bad-faith claim without evidence that the client’s mark is well known, or without other strong prior-right evidence, usually has a weaker chance of success. Prior registrations in several countries in related classes, dated before the adverse registration, often help show bad faith and imitation of a well-known mark.