The Constitutional Court of Indonesia issued a landmark decision on 30 July 2024.
The case involved a micro, small and medium enterprise (MSME) owner of the HDCVI and Logo trade mark, facing a lawsuit for the deletion of his trade mark on the basis that it had not been used for three (3) consecutive years. In response, he filed an application to the Constitutional Court in November 2023
arguing that the three (3) year non-use period as a ground for deletion is very detrimental to MSMEs with limited capital operating under challenging conditions, citing reasons such as COVID-19 pandemic, which prevented production by many MSMEs. Furthermore, he argued that such provision is contrary to the principles of intellectual property rights aimed at encouraging innovation, and can be exploited by business competitors, thereby causing significant loss of time and energy to bona fide trade mark right owners.
The panel of Constitutional Court judges took into consideration that the Indonesian economy is reliant on MSMEs, therefore it is necessary to adjust the time limit for non-use of a trade mark from the original three (3) years to five (5) consecutive years. This adjustment provides sufficient time for registered trade mark owners who experience circumstances beyond their control to prepare to resume producing goods or services under their registered trade marks.
Further, in applying to delete a registered trade mark for non use, it must be supported by adequate data showing that the registered trade mark had in fact
not been in use. This can be achieved, for example, through a clear, measurable, and transparent survey process conducted by competent parties with accountable results.
In arriving at this decision, the Constitutional Court also took into consideration the need to align the time limit to non-use with that for cancellation of a trade mark, which is set at five (5) years. The judging panel also introduced a new provision relating to force majeure which may be invoked as an exception to non use.
The Court’s decision, which is final and binding, will be implemented prospectively.
For cases filed before this ruling, the old provision of three (3) year period still applies.
This article was first published in the December 2018 edition of Law, Lore & Practice.
By Denise Mirandah and R. Prista Devina