The above simple question should not be ignored by those who have registered marks or have filed mark applications, since the mark holders still stand a chance of losing their marks even when those marks have been registered.
So, how can a mark holder lose his registered trademark in Indonesia?
In Indonesia, a trademark holder can lose his registered trademarks by following conditions:
- the initiative of Directorate General of Intellectual Property Rights of the Republic of Indonesia;
- the request of the mark owner;
- deletion by court decision;
- cancellation by court decision;
- failing to renew the registered mark.
As stated in Paragraph 1 of Article 61 of the Indonesian Law number 15 of 2001 regarding Marks, the deletion of mark registration from the General Register of Marks may be made by the Directorate General either at its own initiative or at the request of the owner of the Mark concerned.
Paragraph 2 of the said article provides a further explanation on what conditions that the deletion of registered marks may be made by the initiative of the Directorate General:
a. the Mark has not been used for 3 (three) consecutive years in trade of goods and/or services from the date of registration or of the last use, except there is an excuse which is acceptable to the Directorate General; or
b. the Mark is used for the kind of goods and or services which is not in pursuant to the kind of goods or services for which the Mark application for registration was filed, including the use of Mark which is not in accordance with the registered Mark.
The said article has clearly stipulated the obligation for the mark holder to use his registered mark in trade of goods and/or services for the same kind of goods and/or services as applied for. Otherwise, the mark concerned shall be deleted.
In the case that a registered mark is deleted by the mark owner, a request for the deletion should be submitted by the owner or his proxy to the Directorate General, which later will be recorded at the General Register of Marks and announced at the Official Gazette of Marks.
The request for deletion can be submitted either for all or part of the designated goods or services. Apart from the Directorate General and the mark owner, any third party can also file a request for the deletion of a registered mark on the same grounds as referred to in Article 61 Paragraph 2 by filing a claim at the Commercial Court.
Furthermore, the owner of unregistered mark or any interested party may file a lawsuit for the cancellation of a registered mark after filing an application at the Directorate General as set out in the Mark Law.
Another way of losing a registered mark is by failing to renew its registration. As you may be aware, a registered mark in Indonesia has legal protection for 10 years period computed from the date of filing. The protection period can be extended for 10 years for each period of extension.
The request for extension shall be filed in writing by the owner or his proxy within a period of not more than 12 months before the expiry of the protection period of said registered mark. The failure to meet the deadline will cause the concerned registered mark lose its legal rights.
HARMET & CO.
Intellectual Property Rights
Jakarta, INDONESIA
Website: www.harmet-ip.com
