Source: Constitutional Court
https://www.mkri.id/index.php?page=web.Berita&id=21360
On Tuesday, 30 July 2024, the Constitutional Court in its verdict in the Decision Number 144/PUU-XXI/2023 (https://mkri.id/public/content/persidangan/putusan/putusan_mkri_10881_1722313562.pdf) read by one of the Constitutional Court Judges, Enny Nurbaningsih, provided the following legal consideration in the Decision:
“By considering the special conditions of the Indonesian economy, which relies on Micro, Small and Medium sized Enterprises (“MSMEs”), it is necessary to adjust the time limit for the commercial use of non-use trademark, which was originally determined for 3 (three) years to 5 (five) consecutive years. This adjustment provides sufficient time for registered trademark owners who experience circumstances/conditions beyond human capabilities (force majeure) to prepare to re-manufacture goods or services with the said registered trademarks”.
This decision was obtained against the case application filed by Ricky Thio, a MSMEs entrepreneur, proprietor of the registered trademark of “HDCVI & LOGO” listed in the Directorate General of Intellectual Property, Ministry of Law and Human Rights. The Applicant challenged the Article 74 of Law Number 20 Year 2016 Regarding Trademark and Geographical Indication (“Trademark and Geographical Indication Law”) on the Deletion of a Registered Trademark, in which, according to the Applicant, the provision of Article 74 section (1) of the Trademark and Geographical Indication Law concerning the Repeal of Registered Trademarks that can be submitted by third parties who have an interest in Deletion of a Registered Trademark that has not been used commercially for 3 (three) consecutive years, is very detrimental to MSMEs that have limited capital and can change at any time. For example, situations that may cause MSMEs unable to conduct the production or manufacture process such as the Covid-19 Pandemic, economic crisis, and others. The Applicant believed that Article 74 of the Trademark and Geographical Indication Law is in contrary with Article 28D section (1), Article 28H section (4), and Article 33 section (4) of The 1945 Constitution of The Republic of Indonesia.
The Constitutional Court saw the importance of adjusting the time limit for non-use of registered trademarks in trade or commercial activities to 5 (five) years consecutively, that closely related to the time period for Cancellation of a Registered Trademark (according to Article 77 section (1) of the Trademark and Geographical Indication Law) which is also regulated with a period of 5 (five) years. Although the Deletion of a Registered Trademark and the Cancellation of a Registered Trademark are different matters, the regulations for both are in Chapter XII “Deletion and Cancellation of a Trademark Registration” in the Trademark and Geographical Indications Law, hence, both have the same legal consequences.
The Constitutional Court also saw the incompleteness of the reasons for the exceptions as stipulated in Article 74 section (2) of the Trademark and Geographical Indication Law. Currently, Article 74 section (2) of the Trademark and Geographical Indication Law states that the reasons for a Registered Trademark not being used for 3 (three) years consecutively in commercial activities do not apply in the event of:
The Constitutional Court saw the importance of affirming the scope of other similar prohibitions, such as circumstances or conditions of force majeure, including economic and monetary crises, natural disasters, and pandemics. These force majeure conditions can be one of the factors that cause the trademark owner to be unable to use the registered trademark (non-use) or to run their businesses normally.
Based on these considerations, the Constitutional Court granted partially the case application of Ricky Thio, to include:
Hence, the norm of the Article 74 section (1) of the Trademark and Geographical Indication Law in full will be read “The deletion of a registered trademark may also be filed by an interested third party in the form of a lawsuit to the Commercial Court by a reasoning of that the trademark has never been used for 5 (five) years consecutively in the trading of goods and/or services since the date of registration or the latest utilization”.
Bibliographies:
Supplement to the State Gazette of the Republic of Indonesia Number 5953, Explanations of Law Number 20 Year 2016 Regarding Trademark and Geographical Indication.
