Director-General for Intellectual Property of the Law and Human Rights Ministry Mien Usihen testifying at a judicial review hearing of the Law on Trademarks and Geographical Indications, Monday (2/19/2024). Photo by MKRI/Ifa.
JAKARTA (MKRI) — In principle, the provision on the removal of registered trademarks refers to Article 19 of the TRIPS Agreement, which stipulates that a registered trademark can be canceled only if it is not used for at least 3 (three) consecutive years unless there are valid and justifiable reasons. Registered trademarks must be used in activities relating to goods and/or services in order to carry out the trademark’s function as a distinguishing force in trade activities. This also provides consumers the right to recognize a registered trademark in a commercial product.
The statement was made by Director-General for Intellectual Property of the Law and Human Rights Ministry Mien Usihen on behalf of the Government/President at a material judicial review of Law No. 20 of 2016 on Trademarks and Geographical Indications (MIG) on Monday, 19 February 2024. The third hearing for both cases No. 144/PUU-XXI/2023 and No. 162/PUU-XX/2023 was supposed to present the Government/President’s and the House of Representatives’ (DPR) testimonies, but the House was absent.
Mien further explained that the TRIPS Agreement allows for flexibility on the start of the use of any trademark. It only stipulates that a trademark can be removed when it has not been in use for three consecutive years. This is in line with Article 74 of the Trademark Law.
“If a registered trademark is not used commercially, there will be discrimination, unhealthy competition, and alleged assumption of bad faith to obstruct other parties who wish to register and use the trademark commercially,” he said.
In addition, Mien explained, the regulation of the use of a registered trademark is flexible, because if the owner has not been able to use the trademark in commerce, they can give permission or license to another party to be able to use it. Thus, there are no specific restrictions on how a trademark must be used or marketed, both in terms of territory and marketing period. In other words, the trademark owner can flexibly use the trademark.
The Government had discovered that the removal of the Petitioner’s registered trademark has been ruled in court with a ruling that was based on statutory legislation and evidence presented in court.
“Therefore, the Petitioner’s right to trademark was not revoked arbitrarily, but has been examined in court with a ruling that reflects justice, certainty, and benefit,” Mien stressed.
Legal Protection over Trademarks
In response, Constitutional Justice Enny Nurbaningsih highlighted legal protection in cases such as the COVID-19 pandemic and the time limit mentioned in the Trademark Law. “Is there any other provisions that support the Government’s action in [providing] legal protection for the Petitioner in the event of unwanted circumstances such as the COVID-19 pandemic?” she asked.
Next, Constitutional Justice Arsul Sani asked the Government, “Does the Government have any other policies such as government regulations and such that would allow trademarks not be removed despite not in use for three consecutive years outside of the exemption to this article?”
Comparison to Other Countries
Constitutional Justice M. Guntur Hamzah said countries such as the UK and Norway, where the use of a trademark expires after ten years as it does in Indonesia, distinguishes between trademark use and trademark protection. Meanwhile, the legal protection for a trademark expires after five years.
“Meanwhile, [legal protection for a trademark] in Indonesia applies for three years. Can you explain why so? In relation to legal protection for trademark users, can the Government explain on what evidence can the party who takes over a trademark does so to a trademark that has not been in use? What constitutes not being in use?” Justice Guntur asked.
Trademark License
Meanwhile, Chief Justice Suhartoyo asked the Government the granting of license of a trademark that is not in use. “[When] a trademark is not in use, a license [to use it] may be given to another party. What regulates it? Is it the TRIPS Agreement? Or is it part of the Trademark Law? Would not the granting of license to another party potentially become modus for a party who, in bad faith, would like to avoid the provision of three years?” he asked.
Before concluding the hearing, Chief Justice Suhartoyo announced that the next hearing will take place on Wednesday, February 28, 2024. The hearing will present testimonies of two experts for the Petitioner of case No. 144/PUU-XXI/2023.
Also read:
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The case No. 144/PUU-XXI/2023 was filed by Ricky Thio, an MSME (UMKM) entrepreneur who owns the trademark “HDCVI & LOGO,” which has been registered with the Ministry of Law and Human Rights. He challenges Article 74 of the Trademark Law on the removal of registered trademarks.
At the preliminary hearing on Wednesday, November 15, 2023, the Petitioner and legal counsel James Erikson Tamba said that the Trademark Law intended to protect MSMEs are supposed to take into account the characteristics of domestic MSMEs. The Petitioner argued 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 an economic crisis, their trademark rights may be revoked due to the enactment of said article. He asserted that the article is in violation of Article 28D paragraph (1), Article 28H paragraph (4), and Article 33 paragraph (4) of the 1945 Constitution and should be declared not legally binding.
Also read:
Provision on Trademark Similarity in Trademark Law Challenged
Justices Ask About Submission of Documents for Petition on Trademark Similarity
Meanwhile, case No. 162/PUU-XX/2023 was filed by Djunatan Prambudi, a self-employed resident of Surabaya City. He challenges Article 21 paragraph (1) of the Trademark Law.
At the preliminary hearing on Tuesday, December 19, 2023, the Petitioner revealed that he has suffered a constitutional loss due to the enforcement of Article 21 paragraph (1) of the Trademark Law, which reads, “The application of trademark shall be rejected if that trademark bears similarities to or is identical with another.” Its elucidation reads, “What is referred to as ‘similarities’ means similarities caused by dominant elements between one brand and another, giving rise to the impression of similarity, in terms of form, placement, writing, or combination of elements and speech sound similarities within the brand.”
He believes the provision has made vulnerable anyone who files a lawsuit for cancellation of trademark if there is a similarity or identicalness with another trademark. Even worse, when one harmed by trademark infringement then files a lawsuit but is subsequently rejected by a judge, this could lead to unfair business competition, which the Petitioner had experienced.
The Petitioner also revealed a concrete case relating to Supreme Court Decisions No. 10/PDT.SUS.MEREK/2020/PN.NIAGA.JKT.OST and No. 39 PK/Pdt.Sus-HKI/2021, which rejected the lawsuits. The disputing parties were PUMA SE as plaintiff and PUMADA as defendant.
Therefore, in his petitum, the Petitioner requests that the Court declare Article 21 paragraph (1) of the Trademark Law unconstitutional and not legally binding, insofar it be interpreted as “The application of trademark shall be rejected if that trademark bears similarities to or is identical with another as a whole and not examined in part nor separately word for word.”
Author : Sri Pujianti
Editor : Nur R.
PR : Andhini S.F.
Translator : 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.
Monday, February 19, 2024 | 15:14 WIB 220