USE IT OR LOSE IT: PROVING THE USE OF YOUR REGISTERED TRADEMARK IN INDONESIA ( IP Updates 009/11 )
The non-use cancellation action serves a very consequential cause once it appropriately applied. Thus, Just like other country, Indonesia is also include in the trademark laws a regulation by which the registrar in this case Indonesian Trademark Office or any third party may file a petition for the cancellation of a trademark’s registration based on non-use. Unlike infringement, non-use of a mark is not a criminal offense.
Briefly reviewing the protection period of Trademark registration pursuant to Indonesian Trademark Law that a registered mark shall have legal protection for a period of 10 (ten) years from the Filing Date. The proprietor of a registered mark may extend the registration of the same protection period of 10 (ten) years, within a period of not more than 12 months before the expiry of the protection period.
Concerning the use of mark, according to the Law No. 15 of 2001 on mark article 61 paragraph 2 point (a) that the 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. In this case, any third party shall also be able to file a petition for the deletion against the registration of a mark on the grounds of non use in the form of claim filed at the Commercial Court.
Pursuant to the above mentioned provision, the cancellation provision of Indonesian trademark law is straightforward: a third party may request cancellation of a registration by filing a claim in the Commercial Court on the ground that the mark has not been used during the three-year vulnerability period. In order to avoid cancellation, the registrant may supply the court with a valid excuse for such non-use. The petitioner bears the burden of proving non-use; however, the petitioner also has the specific burden of proving when the mark was last used in Indonesia. The petitioner must not only prove non-use, but must also specify the date on which use of the mark ceased.
In Practice, to ascertain whether or not the cited registered mark is vulnerable to be canceled based on non use, it is hard to be proved. Because, there is no legitimate institution to watch or monitor the use of a mark in the actual market in Indonesia. Otherwise, it will be easier for the owner of the registered mark to prove that his mark is used. Therefore, this action is not effective since the chances of success cannot be guaranteed.
Concerning to the rarity of a successful non-use cancellation action. In many cases in Indonesia cancellation actions based on confusing similarity or bad faith seems to set a higher chances of success than it is in cancellation actions based on non-use. It is ironic for whatever the purpose or aim behind this hurdle.
The above case shows that the controlling and monitoring of the registered mark should be increased. It is hoped that in the future the Directorate of Mark has a legal institution to control and monitor the registered marks in the actual market.