1. INTRODUCTION
    Trademark, a result of the intellectual property process, has an important role in economic activities and trade in goods/services. In Indonesia, the trademark provisions are regulated under the Law Number 20 Year 2016 concerning Trademark and Geographical Indications (“Trademark Law”). According to this law, the right to a trademark is an exclusive right granted by the state to the owner of a registered trademark for a certain period of time by using the trademark itself or giving permission to other parties to use it. Registered trademark should be used for trading activities of goods and services.Recently, on 30 July 30 2024, the Constitutional Court (“CC”) through Decision Number 144/PUU-XXI/2023 gave a judicial review on Article 74 paragraph (1) and paragraph (2) letter c of the Trademark Law. The two articles regulate the removal of unused registered trademark.
  2. DISCUSSION
    Based on the CC Decision Number 144/PUU-XXI/2023, Article 74 paragraph (1) of the Trademark Law is contrary to the 1945 Constitution (“Constitution”) and has no binding legal force as long as it is not interpreted as:“The removal of a registered trademark can also be submitted by an interested third party in the form of a lawsuit to the Commercial Court for reasons that the trademark has not been used for 5 (five) consecutive years in the trade of goods and/or services since the date of registration or last use”.In addition, the CC stated that Article 74 paragraph (2) letter c is contrary to the Constitution and has no binding legal force as long as it is not interpreted as “Other similar prohibitions, including in force majeure conditions stipulated by Government Regulation”.The Extension of Time for Removal of Unused Registered Trademark.
    Previously, Article 74 paragraph (1) of Trademark Law stipulates that the removal of a registered trademark can be submitted by an interested third party on the grounds that the trademark have not been used for 3 consecutive years in the trade of goods and/or services since the date of registration or last use. It should be noted that the provision has been regulated since the 1992 trademark law until today which is adopted from Article 19 Annex of the Trade Related Aspects of Intellectual Property Rights (“TRIPs”) Agreement. This provision however only serves as a minimum limit. In practice, participating countries are free to determine the longer time as long as it does not violate the minimum limit subject to the TRIPs Agreement.

    CC considers that although Indonesia adheres to the first to file principle, but by taking into account the specificity of the nation’s economy which relies on Micro, Small and Medium Enterprises (“MSMEs”), it is necessary to adjust the non-use time limit on registered trademark from 3 years to 5 consecutive years. With the extension of time, it is expected to provide sufficient time for registered trademark owners in the event of force majeure. So that MSME-scale entrepreneurs still has sufficient time to prepare for the production of goods or services with their registered trademark.

    Other Similar Prohibitions
    Article 74 paragraph (2) of the Trademark Law regulates other reasons that can be served as an exception to the removal of unused registered trademark including the provisions in letter c, namely “the existence of other similar prohibitions”. The norm does not clearly regulate what is meant by “other similar prohibitions” the explanation of the article also only states “sufficiently clear”.

    According to the CC’s consideration, it is necessary to emphasize the scope of other similar prohibitions to include the force majeure conditions such as economic crises, monetary, natural disasters, and pandemics. The CC further considers that it can affect the economic climate of the community both in terms of entrepreneurs or trademark owners with consumers, or in other words, the force majeure condition is one of the reasons that causes the owner of the trademark cannot use their registered trademark or cannot run the business as it should.

  3. CONCLUSION
    The CC Decision Number 144/PUU-XXI/2023 is intended for MSMEs since the country’s economy, according to CC, heavily relies on MSMEs. Despite that, this decision is beneficial for all trademark owners.
Daffa Fahrizky Mahardhika

Source:

  • Constitutional Court Decision Number 144/PUU-XXI/2023
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