The Indonesian Supreme Court states that the IKEA mark owned by IKEA System BV in Class 20 (home furnishing made from wood, cork, grass, rattan and plastic) and 21 (household containers made from porcelain or pottery) should be deleted in Indonesia, because this mark has not been used for three (3) consecutive years in trading of goods and/or services as from the registration date or the latest use in Indonesia. According to Article 61 (1) and (2.a) of the Indonesian Trademark Law No. 15 of 2001 ( herein after called “Trademark Law” ) which are stipulated that :
The abolition of a registration of a Trademark from the Trademark General Registry may be made based on an initiative of the Directorate General or an application filed by the owner of the Trademark.
An abolition of a Trademark registration on the initiative of the Directorate General may be undertaken if:
The Trademark has not been used for three (3) consecutive years in trading of goods and/or services as from the registration date or the latest use, except for reasons which are acceptable by the Directorate General.
Elucidation: The latest use is the use of the Trademark in the production of goods or services being traded or rendered. The moment of the latest use shall be the latest use though the goods are thereafter still in circulation in the general public.
Case Position :
According to the Information from Mr. Ahmad Ramli, Director General for Intellectual Property of Indonesia, Inter IKEA System BV registered the IKEA Mark based on Nice Classification in classes 20 and 21 to the Indonesian Trademark Office in 2010. Three years later, PT. Ratania Khatulistiwa from Surabaya Indonesia filed the IKEA Mark with The Indonesian Trademark Office. However, the Indonesian Trademark Office rejected the application filed by Ratania Company.
Because of the rejection, PT. Ratania Khatulistiwa filed a lawsuit with the Indonesian Commercial Court to delete the IKEA mark owned by Inter IKEA System BV because of non use. PT. Ratania Khatulistiwa conducted a market survey in 5 (five) big Cities in Indonesia (Medan, Jakarta, Bandung, Surabaya and Denpasar) on November – December 2013. The results showed the Product of IKEA owned by IKEA System BV in classes 20 and 21 has not been sold or distributed in furniture stores across Indonesia. This survey was conducted in 140 furniture stores in Indonesia.
The Indonesian Commercial Court declared on September 17th, 2014 that the IKEA mark owned by Inter IKEA System BV has not been used for 3 (three) consecutive years in trading of goods and/or services in Indonesia. The judges from the Indonesian Commercial Court have ordered the Indonesian Trademark Office to delete the IKEA mark in classes 20 and 21 in Indonesia.
Afterward, Inter IKEA System BV appealed to the Indonesian Supreme Court. But, unfortunately, the Indonesian Supreme Court rejected the cassation of Inter IKEA System BV.
Meanwhile, Tony Mampuk, Head of Government relation to IKEA Indonesia confirmed that the Indonesian Supreme Court decided to order the Indonesian Trademark Office to delete IKEA mark owned by Inter IKEA System BV in 2010. But, Inter IKEA System BV re-filed the IKEA mark for Class 20 and 21 with the Indonesian Trademark Office in 2012. The IKEA mark was registered in 2014. According to the decision of the Indonesian Supreme Court, that situation does not have any result in the IKEA mark that re-filed in 2012.
Our Legal Opinion :
Based on the above case, related to the Indonesian Trademark Law, PT. Ratania Khatulistiwa has done the right step to resolve this matter by filing a Cancellation Action through the Indonesian Commercial Court in accordance to Article 61 paragraph (2) letter (a) of the Indonesian Trademark Law. A registered mark which has not been used for 3 (three) consecutive years could be canceled. However, to make sure the mark has been used or not, the initiative is still in the hand of the interested party. Up until now, there is still no institution who has responsibility to watch the using of certain mark especially the registered one in Indonesia.
On the other hand, even though PT. Ratania Katulistiwa as the interested party has been indicated to have a bad faith by using IKEA’s famous mark, even if they can prove that the said mark has not been used for 3 (three) consecutive years, they are still considered to have a bad faith.
In this case, we would like to explain some of the actions of the parties who are involved in the IKEA’s case in Indonesia, are as follows :
Analysis to PT. Ratania Khatulistiwa as an Applicant
In accordance to Article 1 point 6 of the Indonesian Trademark Law which is stated that “Applicant is the party who files an Application” without any further explanation regarding the “party” who has the right to file an application. In the meantime, we found a lot of violations of the said provision, assuming that anyone could file a trademark application easily. In our current practice, there is a lot of foreign marks that are registered in Indonesia by different name other than the original holder. For example, IKEA is a worldwide famous mark and also the name of the legal entity which registered the said mark, in the meantime PT. Ratania Khatulistiwa can also file the same mark even though it is only for a certain class (classes 20 and 21). This condition made us clearly see that there is a possibility for any parties who wish to use a foreign mark as their own mark. PT. Ratania Khatulistiwa is only in the process of filing the mark and it is still possible for the trademark office to reject the application if the relevant Mark :
Is similar in its essential part or in its entirety with a Mark owned by another party which has previously been registered for the same kind of goods and/or services.
Is similar in its essential part or in its entirety with a well-known Mark owned by another party for the same kind of goods and/ or services.
Is similar in its essential part or in its entirety with a known geographical indication.
Furthermore, a mark is still possible to be rejected if the said mark has a similarity in its essential parts with a famous trademark owned by another party for a different kind of goods an/or services. But, specifically for the said provision, until now still can not be applied since the absence of the specific requirements which is further stipulated in Government Regulation.
Referring to the above case, if the mark of PT. Ratania Khatulistiwa will be registered in the end, it can be used as a justification, however, according to Article 4 of the Indonesian Trademark Law regarding to the application based on bad faith, the action showed by PT. Ratania Khatulistiwa can not be justified because it has violated the principle of trademark registration in Indonesia, namely “A Mark shall be registered on the basis of an Application by an Applicant having a good faith”. An applicant with good faith is one who registers his mark properly and honestly without any other intention to copy, imitate or duplicate the fame of other party’s mark for his business interest which causes a loss to the other party or create a condition for competition which is unfair, deceiving, or misleading for the consumers.
Analysis to the Trademark Office
In our opinion if all principles of trademark registration in Indonesia are already applied, before the substantive examination process of the trademark, the first step that should have been taken by the Trademark Examiner is to assure whether Article 4 of the Indonesian Trademark Law has fulfilled or not.
The trademark office has the right to reject PT. Ratania’s application for their IKEA mark because it has a similarity in its essential part with Inter IKEA System BV’s IKEA registered mark. However, before such action taken by the Examiner, PT. Ratania Khatulistiwa has priorly filed a cancellation action based on Non-use. Such action has become a breakthrough for any party who is interested to file a cancellation based on non-use.
In our opinion, this could also be an input for the Indonesian Trademark Office to also monitor the use of the registered mark. Without any monitoring for the use of registered mark performed by the Trademark Office and lack of knowledge of the famous mark, it is feared that there will be other parties who have no right to easily file a cancellation action to other famous trademark based on prevailing law.
Written By :
Nadia Am Badar, S.H
Agus Candra Suratmaja, S.P
Jati Wibowo, S.H