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Indonesia Trademark Cancellation Action Upheld Despite Late Filing

by mirandah

In Djunatan Prambudi v PT Profilia Indotech (7 PK/Pdt.Sus-HKI/2018), the Supreme Court of Indonesia has rejected a Petition to reconsider its decision to deny an appeal for the overturning of a decision of the District Court to cancel three trademarks.

Djunatan Prambudi was the owner of three registered marks: “PROFIL 88” (in Classes 6 and 11), “PROFIL 89” (in Class 11) and “PROFIL 76 (in Class 11). At the District Court, PT Profilia Indotech (‘the Plaintiff’) successfully cancelled the three marks on the grounds of similarity with its prior registered mark “PROFIL TANK” in Class 21 and bad faith on behalf of Mr. Prambudi (‘the Defendant’) in registering the marks.

This was despite the Defendant’s plea of objection that the period within which a cancellation action could be valid had expired, as the action had been filed more than five years subsequent to the registration of the three marks.

Following the decision, Mr. Prambudi filed a petition for cassation of the District Court’s decision at the Supreme Court, which was rejected. Mr. Prambudi filed for a Petition of Reconsideration with respect to this decision.

In its judgment dated 6 February 2018 (published 28th April 2018), the Supreme Court rejected Mr. Prambudi’s Petition of Reconsideration. The Court’s grounds of decision were three-fold:

  • The mark “PROFIL TANK” owned by PT Profilia Indotech was registered prior to Mr. Prambudi’s marks, and therefore was entitled to protection.
  • Despite the prior mark and cancelled marks having been registered in respect of different classes, the goods for which both marks were registered have similar purposes and functions, are used in similar industries and sold on similar markets.
  • Prambudi had, in any event, presented the classification of goods letter in connection with his marks after the District Court decision was issued and valid.

This decision is notable to mark-holders in Indonesia as it evidences that cancellation actions can be ruled successful even where one or more marks under objection have been registered more than five years prior to the action’s filing. Furthermore, it is not necessarily the case that for marks confusingly similar to prior registered marks to be cancelled, they need be registered in the same class of goods/services.