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Invalidation Action Based On Non-Use

TRADEMARK INVALIDATION [Article 61-66 Law No. 15 of 2001]


Invalidation of a trademark registration by the Indonesian IP Office

The invalidation of mark registration from the General Register of Marks may be made by the Indonesian Intellectual Property Office (“the Office”) either at its own initiative or at the request of the owner of the mark concerned.

Invalidation of a mark registration on the initiative of the Indonesian IP Office (Article 61)

The invalidation of a mark registration on the initiative of the Office may be made if:
a. the mark which 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 Office; or
b. 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.

The reasons as referred to in  letter a are:

a. import prohibition;
b. the prohibition related to the permit for the distribution of goods using the mark concerned or any temporary decision from the competent authority;
c. other similar prohibitions imposed by Government Regulation.

The invalidation of mark registration  shall be recorded in the General Register of Marks and announced in the Official Gazette of Marks. Any objection against the decision on the invalidation of a mark registration may be submitted to the Commercial Court.

Invalidation of a mark registration by the the Indonesian IP Office at the request of the mark owner (Article 62)

A request for the invalidation of registration of a mark by the mark owner or his proxy, either for all or for part of the kinds of goods and/or services, shall be submitted to the Office.

Where the mark is still bound by a valid license agreement, the invalidation may only be made with a written consent of the licensee. Exception as to the consent of the licensee may only be made possible where the licensee clearly agrees to waive such consent in the license agreement.

The invalidation of registration of a mark  shall be recorded in the General Register of Marks and announced in the Official Gazette of Marks.


Invalidation of a mark registration by the third party (Article 63)

Any third party shall also be able to file a request for the deletion of the registration of a mark at the commercial court, on the following grounds:

a. the mark which 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 Office; or
b. 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.

The reasons as referred to in  letter a are:

a. import prohibition;
b. the prohibition related to the permit for the distribution of goods using the mark concerned or any temporary decision from the competent authority;
c. other similar prohibitions imposed by Government Regulation.

The invalidation of registration of a trademark shall cause the termination of the legal protection on the relevant trademark and the relevant Mark Certificate shall be declared to be null and void.

Thoughtful investigation on non-use should be carried out before considering this cause of action.