There are two procedure for cancellation of a Registered Trademark in Indonesia as follows :
1. Filing Cancellation Action based on non-use
The cancellation of the cited mark based on non-use is actually regulated in Article 61 Paragraph (2) Letter (a), Letter (b) of The Indonesian Trademark Law No.15 of 2001 which asserts that :
“A deletion of a mark registration on the initiative of the Directorate General may be made if the mark has not been used for 3 (three) consecutive years in trade of goods and/or services from the date of registration or of the last use, except there is an excuse which is acceptable to the Directorate General; or the mark is used for the kind of goods and or services which is not in pursuant to the kind of goods or services for which the mark application for registration was filed, including the use of mark which is not in accordance with the registered mark”.
However, the initiative of such deletion can not be easily implemented because there is not any exact measures of the non-use of a trademark in Indonesia. Furthermore, nowadays, there is not any legitimate institution to watch or to monitor the use of a trademark in actual market in our country. In short, even though the deletion of a trademark registration based on non-use is regulated by the law, but such deletion can not be effectively applied. Based on the above mentioned facts, the Cancellation Action based on non-use is not effective and generally unfavourable.
Non-use Cancellation Action is not effective and rarely filed with the Commercial Court. However, it does not mean that we cannot file such lawsuit.
Further, the requirements involved in filing the Cancellation Action based on non-use are as follows:
- A notarized and legalized Power of Attorney (a copy form is enclosed);
- Articles of Association of the company (if the Plaintiff is a company);
- The evidence of non-use of the adverse party’s trademark
In order to reveal any information whether or not the trademark is being used by the adverse party in actual market in Indonesia, it is very recommended to conduct the investigation before filing a Cancellation Action. The information obtained from the investigation can be very useful for us to manage the strategy in the future to overcome this case.
2. Filing a Cancellation Action based on the Client’s well-known Trademark and adverse party’s bad faith
The Cancellation Action in the basis of the Client’s well-known trademark and adverse party’s bad faith in registering the relevant trademark is regulated in the Article 68 Paragraph (1) of Indonesian Trademark Law No.15 of 2001; “A lawsuit for the Cancellation of a registered mark may be filed by any interested party based on the grounds as referred to in Article 4, Article 5 or Article 6”.
The requirements involved in filing the Cancellation Action against the cited registration are as follows :
- A notarized and legalized Power of Attorney (a copy form is enclosed).
- A notarized worldwide list of the client’s relevant trademark registration.
- Original trademark registration certificates, in at least 5 (five) countries including home country.
- Brochures and advertisement.
- Articles of Association of the company (if the Plaintiff is a company).
- Evidence as the prior user of the relevant mark.
- Some sample of the product bearing the relevant trademark.
- The complete name and address of the client’s distributor/ agent in Indonesia.
- The copy of the worldwide trademark certificates in english translation.
The Cancellation Action will be filed one month after the receipt of the above required documents.
The Power of Attorney should be notarized by a Notary Public and then legalized by the Indonesian Consulate in your country. The Power of Attorney should be filed at the time of filing the cancellation.
If the Client files the Cancellation Action based on bad faith without being able to prove that the Client’s trademark is the well-known trademark, the chance of success in filing the Cancellation Action would be low.
Meanwhile, if the Client can show at least 5 (five) worldwide registrations of the concerned trademark in related classes which are prior to adverse party’s registration date, the adverse party can be considered having registered his trademark based on the bad faith and imitating the Client’s well-known trademark. So that the chance of success would be high.