Trademark Non-Use in Indonesia:

Legal Implications and Risks Introduction

In Indonesia, a registered trademark is not just a legal formality—it must be actively used in the marketplace. Failure to use a trademark for an extended period can lead to its cancellation under the Trademark Law (Law No. 20 of 2016 on Marks and Geographical Indications). This article explores the concept of trademark non-use, its legal implications, and steps businesses can take to mitigate risks.

1. What Constitutes Trademark Non-Use?

Trademark non-use occurs when a registered trademark is not used in commerce for a continuous period. According to Article 72 of the Trademark Law, a trademark can be canceled if it is not actively used for three consecutive years after its registration date. Non-use undermines the primary purpose of trademark registration, which is to distinguish goods or services in the marketplace.

Key Considerations for “Use”:

Commercial Activity: The mark must appear on goods, packaging, advertisements, or other promotional materials.

Geographical Scope: Use must occur within Indonesia.

Substantial Use: The use must be genuine, not token or symbolic, solely to maintain the trademark registration.

2. Legal Grounds for Cancellation Due to Non-Use

Under Article 74, third parties with a legitimate interest—such as competitors or individuals seeking to use the mark—can file for the cancellation of a trademark based on non-use. The petitioner must prove that the trademark has not been used in Indonesia for three consecutive years.

3. Defending Against Non-Use Claims

Trademark owners facing cancellation claims must demonstrate evidence of use within the three-year period. Some examples of valid proof include:

Sales Records: Invoices or contracts showing transactions involving goods or services under the mark.

Advertising Materials: Marketing campaigns, digital promotions, or traditional media advertisements.

Distribution Agreements: Partnerships with retailers or distributors to deliver goods bearing the trademark.

If non-use occurred due to valid reasons, such as government restrictions or force majeure events, the owner may argue this as a defense.

4. Risks of Non-Use for Businesses

Failure to use a trademark puts businesses at risk of losing exclusive rights. Cancellation due to non-use can:

Open the door for competitors to register or use the mark.

Damage brand reputation and market position.

Result in lost investments made during the trademark registration process.

5. Practical Steps to Avoid Trademark Non-Use

Businesses can adopt the following strategies to ensure compliance with Indonesian trademark law:

Actively Use Registered Trademarks: Ensure that your trademark is visible in advertisements, on products, and during promotions.

Maintain Detailed Records: Keep organized documentation of trademark usage, including dates and evidence of commercial activities.

Monitor Market Trends: Regularly review the relevance and usage of your trademarks to adapt to market needs.

Seek Legal Advice: Consult with an IP law firm to assess trademark portfolios and ensure all marks are actively used and compliant with local laws.

6. Filing for Non-Use Cancellation

For businesses impacted by unused trademarks owned by competitors, filing a non-use cancellation request can be a strategic move. Petitioners must provide evidence of non-use and file their request with the Directorate General of Intellectual Property (DGIP).

Trademark non-use in Indonesia is a critical issue that can affect brand protection and market presence. Businesses must actively use their trademarks and document their use to prevent cancellation. Conversely, filing a non-use cancellation request can be an effective strategy to clear unused marks and pave the way for new registrations.