How to Win Trademark Cancellation Cases and Avoid Costly Mistakes in Indonesi

If you’re expanding your business into Indonesia, one common issue you might face is trademark squatters—parties registering your brand before you do. In this situation, trademark cancellation in Indonesia becomes a crucial legal strategy to reclaim your rights.

But here’s the catch: cancellation isn’t just about filing a case. Without the right approach, it can be costly, time-consuming, and unsuccessful.

Let’s break down what actually works—based on Indonesian law and recent court practice.

What Is Trademark Cancellation in Indonesia?

Trademark cancellation is a legal action filed before the Commercial Court (Pengadilan Niaga) to remove a registered trademark from the official registry.

The legal basis is primarily governed under:

• Law No. 20 of 2016 on Trademarks and Geographical Indications
• Article 74, which regulates cancellation based on non-use

A cancellation claim can generally be filed on several grounds, including:

• Non-use of the trademark
• Bad faith registration
• Similarity with prior registered marks

Among these, non-use cancellation is often the most objective and practical route.

Non-Use Cancellation: Legal Basis & Updates

Under Article 74 of Law No. 20 of 2016, a registered trademark can be cancelled if it has not been used for a certain period.

Originally, the required period was 3 consecutive years. However, this was extended to 5 consecutive years following:

• Constitutional Court Decision No. 144/PUU-XXI/2023

This means a third party can now file a cancellation claim if the mark has not been used for five years since registration or last commercial use.

Who Can File a Cancellation?

Not everyone can file.

Under Indonesian practice, the plaintiff must prove they are an “interested party” (pihak yang berkepentingan). This is commonly shown by:

• Filing a pending trademark application for the same or similar mark

In practice, it is also advisable to request the Directorate General of Intellectual Property (DGIP) to suspend examination of your application while the cancellation case is ongoing, to avoid premature rejection.

The Key to Winning: Strong Evidence

In non-use cases, the burden of proof lies entirely with the plaintiff.

One of the most critical forms of evidence is a market survey, which must:

• Be conducted by a credible and independent research agency
• Cover major commercial regions such as Jakarta, Surabaya, and other key provinces
• Be properly signed, stamped, and methodologically sound

Courts in Indonesia place strong emphasis on formal validity. For example, in several cases, claims were rejected simply because survey reports were not properly executed.

Watch Out for “Token Use”

A common defense strategy is “token use”—where the trademark owner creates minimal or artificial use to avoid cancellation.

In Case No. 17/HKI/Merek/2015/PN JKT PST, the court ruled that token use on apparel products could be disregarded.

However, Indonesian courts have not always been consistent. This makes it essential to anticipate such defenses and prepare counter-evidence in advance.

Regulatory Evidence Is Not Enough

For certain products, regulatory approvals may be required before commercialization, such as:

• BPOM approval for pharmaceuticals and food products
• Excise permits for tobacco
• POSTEL certification for telecommunications devices

While the absence of such approvals can support a non-use claim, courts generally consider this insufficient on its own. Comprehensive evidence—especially market-based proof—is still required.

Exceptions: When Non-Use Is Justified

Non-use may be excused under specific conditions, including:

• Import or distribution restrictions
• Government regulations
• Force majeure events (e.g., pandemics or economic crises)

This exception was also clarified following the Constitutional Court Decision No. 144/PUU-XXI/2023, which acknowledged real-world barriers to trademark use.

Why Strategy Matters More Than Filing

Statistics from published court decisions show that many cases fail due to procedural errors, such as:

• Combining multiple legal grounds in one claim
• Requesting relief beyond the court’s authority
• Submitting incomplete or defective documents

Indonesian Commercial Courts apply strict procedural standards, and there is no opportunity to amend defects once filed.

Work with the Right IP Legal Partner

Given the complexity of trademark cancellation in Indonesia, working with a local legal expert is highly recommended.

At AMR Partnership, we assist international clients in navigating trademark disputes—from legal analysis to court proceedings—ensuring compliance with Indonesian law and maximizing success rates.

Winning Trademark Cancellation in Indonesia

Trademark cancellation in Indonesia is a powerful legal remedy—but only when supported by strong evidence, proper legal grounds, and precise procedural execution.

Understanding the law is just the first step. Winning requires strategy.