Indonesian trademark law stipulates that if a trademark isn’t used for three years, the third party can ask the Commercial Court to remove it. So, it means the third party will initiate a litigation dispute with the trademark owner.
The same case happened with Exxon Mobil Company and Pabrik Tjat Joen Kie Djakarta, fighting over a flying horse logo. Exxon Mobil Company, as a Plaintiff, accuses the registered trademark of Pabrik Tjat Joen Kie Djakarta because they never used it in business. The following article will explain the judges’ decisions and the legal analysis of Indonesian trademark law.
The plaintiff, Exxon Mobil Corporation, is a multinational oil and gas company formed through the merger of Exxon Corporation from New Jersey and Mobil Oil Corporation from New York in 1999.
On the other hand, the defendant owns a paint factory belonging to the Lie Joeng Tong family, established in 1958. The PABRIK TJAT JOEN KIE DJAKARTA factory uses the trademark Tjap KUDA TERBANG and the registered Flying Horse Painting registration, dated May 7, 1958.
In this case, another party involved as a co-defendant is the Directorate General of Intellectual Property (DGIP). They are responsible for justifying its decision regarding approving the defendant’s trademark registration.
The plaintiff submitted applications for the registration of Flying Horse Painting trademarks, seeking protection for goods classified under category 1 to the co-defendant. However, the co-defendant rejected these trademark applications, claiming substantial similarity with the TRICO trademark and its painting.
In response, the plaintiff asserted that they conducted market surveys in five major cities in Indonesia—Jabodetabek, Surabaya, Medan, Bandung, and Semarang—to ascertain the usage of the TRICO brand and the contested painting in the market. This survey evidence has been accepted as valid in other trademark removal cases previously decided in the Commercial Court.
Based on the market survey findings, it was revealed that the defendant did not use the TRICO brand and the contested painting in trade for three consecutive years since the registration date of August 2, 2010, or since the last usage for certain specified goods included in the TRICO brand and the contested painting registration. Given the provisions of Indonesian trademark law, in this case, the Plaintiff is in the position of a third party interested in applying for the removal of the trademark to the Commercial Court.
Legal Basis of the Lawsuit
The article used in this lawsuit is Article 74 paragraph (1) of Law No. 20 of 2016 concerning Trademarks and Geographical Indications.
Article 74 paragraph (1)
The removal of a registered trademark can also be filed by an interested third party in the form of a lawsuit to the Commercial Court on the grounds that the trademark has not been used for 3 (three) consecutive years in the trade of goods and/or services since the registration or last use date.
In this case, the panel of judges decided to adjudicate by rejecting all exceptions from the defendants and granting the plaintiff’s lawsuit in part.
In the dispute between Exxon Mobil Corporation and PABRIK TJAT JOEN KIE DJAKARTA, there are several lessons can be learned to avoid trademark disputes:
- When registering a trademark, the importance of using the trademark actively is emphasized by Indonesian trademark law. If a trademark is not used for three consecutive years, a third party can file for its removal.
- An unused registered trademark can hinder others from registering a similar trademark.
- The importance of conducting trademark searches before registering, to avoid similarity either in substance or entirely.
- The importance of observing deadlines when taking legal actions, to prevent the lawsuit from expiring.
- The importance of collaborating with a legal expert before registering a trademark, as well as during its use for monitoring purposes, to prevent misuse by others.
If you believe that Indonesia is the right market for your product or service, then Am Badar & Am Badar IP Law Firm is the right partner to assist you in navigating through the nation’s IP ecosystem.
Our service not only encompasses the entire registration process but we also provide monitoring services – monitoring over misuses of your registered Intellectual property by irresponsible parties.
Am Badar and Am Badar IP Law Firm is the ideal place for Partners who need services or consultations related to Intellectual Property. Contact us via firstname.lastname@example.org. We will provide the best solution according to your situation.
Putusan Nomor 120/Pdt.Sus/Merek/2022/PN Niaga Jkt.Pst.