Provision on Trademark Removal Challenged

Constitutional Justice Enny Nurbaningsih chairing the panel preliminary hearing of the judicial review of Law No. 20 of 2016 on Trademarks and Geographical Indications, Wednesday (11/15/2023). Photo by MKRI/Ifa.

JAKARTA (MKRI) — The Constitutional Court (MK) held a preliminary hearing of the judicial review of Article 74 of Law No. 20 of 2016 on Trademarks and Geographical Indications (Trademark Law) on Wednesday, November 15, 2023 in the Court’s plenary courtroom. The Case No. 144/PUU-XXI/2023 was filed by Ricky Thio, an individual Indonesian citizen who is an MSME (UMKM) entrepreneur who owns the trademark “HDCVI & LOGO,” which has been registered with the Ministry of Law and Human Rights.

The Petitioner and legal counsel James Erikson Tamba said the Petitioner believes the Trademark Law intended to protect MSMEs are supposed to take into account the characteristics of domestic MSMEs. In addition, it should promote the growth of MSMEs within the national economy based on economic democracy with the principles of togetherness, equitable efficiency, sustainability, environmental insight, and independence, while maintaining a balance between progress and national economic unity.

The Petitioner argues that the legal provisions of Article 74 paragraph (1) of the Trademark Law on the removal of trademarks that are not used in trade for three years is highly detrimental to MSMEs that have limited capital and are subject to potential changes at any time. Therefore, if circumstances arise that prevent MSMEs from producing, such as the COVID-19 pandemic or economic crises, their trademark rights may be revoked due to the enactment of said article.

In the petition, the Petitioner explains that the provision on the removal of trademarks in Article 74 paragraph (1) of the Trademark Law is highly discriminatory and detrimental to MSMEs. He asserts that it can be used as a tool that promotes unfair business competition and kill MSMEs, especially when foreign businesses utilize this provision to revoke the trademarks of domestic MSMEs, as the Petitioner experienced.

In addition, the Petitioner consider Article 74 paragraph (1) of the Trademark Law contrary to the principle of intellectual property rights that emphasize innovation. He argues that Article 74 of the Trademark Law can be used by any business actor by using an institution that does not have the competence to determine whether a trademark is being used or not, to sue competing business owners of trademark rights. Consequently, trademark owners can be sued continuously and experience loss of time and energy in the process. Thus, the Petitioner believes that Article 74 of Law No. 20 of 2016 is contrary to Article 28D paragraph (1), Article 28H paragraph (4), and Article 33 paragraph (4) of the 1945 Constitution and should be declared not legally binding.

Constitutional Loss

In response to the petition, Constitutional Justice Manahan M.P. Sitompul advised the Petitioner to elaborate on his constitutional loss due to the enforcement of the a quo article. “The Petitioner should convince the Court that he has suffered a loss,” Justice Manahan suggested.

In addition, Constitutional Justice Arief Hidayat suggested that the Petitioner elaborate more on the contradiction between the article being tested and the touchstone in the 1945 Constitution. “The more touchstones, the more descriptions of contradictions. Does the article correspond to the 1945 Constitution? Please consider this,” he said, while also suggesting that the Petitioner focus on using Article 28D and Article 28H as touchstones.

Furthermore, Constitutional Justice Enny Nurbaningsih stated that the Petitioner had only described a concrete case. However, in the judicial review of a law, the requirements for constitutional loss must be fulfilled. “Look at the Court’s decisions on the website, and the petitions, those requirements must be included. Then, provide a detailed description,” she said.

Before concluding the hearing, Justice Enny stated that the Petitioner would have 14 days to revise his petition and to submit it to the Registrar’s Office by November 28, 2023 at 09:00 WIB.

Author       : Utami Argawati
Editor        : Lulu Anjarsari P.
PR            : Andhini S.F.
Translator  : Najwa Afifah Lukman/Yuniar Widiastuti (NL)

Disclaimer: The original version of the news is in Indonesian. In case of any differences between the English and the Indonesian versions, the Indonesian version will prevail.

Wednesday, November 15, 2023 | 15:26 WIB 72