We are proud to share our recent success in representing our clients. Our attorneys Nabil Baswel, Lisa Karismawatie and Reihan Faiz, represented our client at the Central Jakarta District Court. The case involved our client; a Hong Kong based electrical equipment company as Plaintiffs against the local individual who registered the relevant Mark and the Directorate General of Intellectual Property Indonesia as co-Defendant.
Our Client has been active in, though not exclusively to, the battery industry since its founding in 1980. Over the years they continuously advanced and spread their company internationally through several initiatives that include the active usage and development of their Mark.
Our client’s trademark was first registered in 1980 in their home country of Hong Kong, before registrations in multiple other countries followed suit. The Plaintiff (our client) has utilized this Mark as the face of their product as they sought to continue protecting and developing it on an international scale.
However, our client encountered a problem when attempting to register the Mark in Indonesia. They applied for registry on 8 May 2014 but were unable to as the Mark was already registered by an Indonesian party on 27 November 2008.
The basis of the lawsuit lies on the issues surrounding use of the registered trademark in Indonesia. We have found that the party who registered the relevant Mark has never marketed or produced battery goods under the Mark for three consecutive years since the registry. This is not in line with Article 1 of Law No. 20 Year 2016 on Trademark and Geographical Indicators which requires the usage of registered Mark. We also refer to Article 74 of the same law which stipulates that the cancellation of registered Mark may also be requested by a relevant third party in the form of a lawsuit to the Commercial Court on the ground that the given Mark has not been used for 3 (three) consecutive years in a course of trades of goods and/or services as of the date of registration or last use.
We have successfully proven before the Court that the Defendant did not use the trademark for the goods “battery” for 3 (three) consecutive years since the registration date or the last usage.
Decision
Decision Number 100/Pdt.Sus-Merek/2023/PN.Niaga.Jkt.Pst was issued on April 10th 2024 was a positive result for our team. The decision ruled the following:
- Granting the Plaintiff’s request in its entirety.
- Declaring the Plaintiff as a valid party in applying for the cancellation of the registered mark under the Defendant’s name
- Declaring that objects registered under the relevant registered trademark has not been used for three years in a row in a commercial context since its registry or at least three years before the a quo was applied.
- Declaring the cancellation of the relevant registered mark
- Ordering the Defendant to erase objects registered under the registered mark.
- Ordering the Defendant to pay court fees.
Conclusion
This case emphasizes the significance of the non-use doctrine in Trademark Law, which requires trademarks to be actively used to maintain legal protection. It prevents the indefinite holding of trademarks without utilization, fostering a competitive marketplace.
Once again, we attribute this success to our attorney Nabil Baswel who led our accomplished team that includes Ms. Lisa Karismawatie and Ms. Reihan Faiz Thalib. We at Am Badar & Am Badar always ensure high-quality services for the best results.
If you require intellectual property information, counseling, trademark cancellation action, or any legal support, please do not hesitate to contact us at ambadar@ambadar.co.id.
