Petitioner Ricky Thio with his legal counsel during the ruling hearing on the judicial review on Trademark and Geographical Indications, Tuesday (7/30/2024). Photo by MKRI/Ifa.
Petitioner Ricky Thio with his legal counsel during the ruling hearing on the judicial review on Trademark and Geographical Indications, Tuesday (7/30/2024). Photo by MKRI/Ifa.
JAKARTA (MKRI) — Considering Indonesia’s specific economic conditions, which relies on SMEs, it is necessary to adjust the time limit for non-use of trademarks from the previously set three years to five consecutive years. This adjustment provides adequate time for registered trademark owners who are experiencing force majeure to prepare for the production of goods or services with the registered trademark.
This legal consideration was outlined in Decision No. 144/PUU-XXI/2023 delivered by Constitutional Justice Enny Nurbaningsih at the ruling hearing on Tuesday, July 30, 2024. The petition was submitted by Ricky Thio, a domestic MSME owner who holds the trademark “HDCVI & LOGO,” which is registered with the Ministry of Law and Human Rights. He challenged the removal of registered trademarks under Article 74 of Law No. 20 of 2016 on Trademarks and Geographical Indications (Trademark Law).
Constitutional Justice Enny Nurbaningsih further explained that the adjustment of the non-use time limit is not intended to ignore the advancements in information and communication technology, where trademark owners can avoid the non-use principle through online commerce so that the registered trademark does not count as non-use.
Moreover, she added, determining the removal of a registered trademark for non-use needs to be supported by adequate, continuous data, for example through a clear, measurable, and transparent survey conducted by competent parties with accountable results. This is part of the state’s effort to create a business climate with healthy competition, as intended by the Trademark Law.
Cancellation and Revocation of Trademarks
The Court recognizes the importance of adjusting the non-use time limit to five consecutive years, which is also closely related to the time limit for the cancellation of trademarks, which is similarly set at five years as stipulated in Article 77 paragraph (1). Although cancellation and revocation are different matters, both are regulated under the Chapter “Cancellation and Revocation of Trademarks” in the Trademark Law, so they have the same legal consequences.
In the context of the cancellation of a registered trademark, a lawsuit can be filed by an interested party based on reasons specified in Articles 20 and 21 of the Trademark Law, such as conflicts with state ideology, legislation, morality, religion, decency, or public order, or if the trademark is essentially the same as, or identical to, another party’s registered trademark or if another party has previously applied for it for similar goods and/or services.
“Thus, without intending to disregard the country’s tendency of the civil law, the adjustment of the non-use time limit for registered trademarks to five years aims to ensure fairness for all trademark owners, aligning with the principle of national treatment and in harmony with the regulations on trademark cancellation. Based on all the legal considerations above, the Petitioner’s claim challenging the constitutionality of Article 74 paragraph (1) of Law No. 20 of 2016, specifically the phrase ‘three years,’ is legally grounded,” stated Justice Enny.
Scope of Prohibition
Regarding the constitutional challenge to Article 74 paragraph (2) letter c of the Trademark Law, the Court found that the norm still lacks completeness in regulating exceptions. Therefore, it is important to clarify the scope of similar prohibitions, such as force majeure conditions, including economic and monetary crises, natural disasters, and pandemics. As Justice Enny explained, such conditions can affect the economic climate for both business owners or trademark holders and consumers. Simply put, force majeure can be a factor that prevents a trademark owner from using their registered trademark (non-use) or from operating their business normally.
Due to the importance of the existence of the norm in Article 74, paragraph (2) of the Trademark Law, the Court deems it necessary to clarify the scope of “similar prohibitions” in Article 74, paragraph (2), letter c of the Trademark Law, including force majeure conditions, which are an inseparable part of the exceptions outlined in the norm of Article 74 paragraph (2) of Law No. 20 of 2016. Based on all the legal considerations above, the Petitioner’s claim challenging the constitutionality of the norm in Article 74, paragraph (2) of Law No. 20 of 2016, specifically the phrase “similar prohibitions” in Article 74 paragraph (2) letter c, was legally grounded.
Consequently, in the ruling, the Court granted the Petitioner’s petition in part. “[The Court] adjudicated, to grant the Petitioner’s petition in part; to declare the phrase “three years” in Article 74 paragraph (1) of Law No. 20 of 2016 on Trademarks and Geographical Indications unconstitutional and not legally binding if not interpreted as ‘five years.’ Thus, Article 74 paragraph (1) of Law No. 20 of 2016 on Trademarks and Geographical Indications should read: ‘The revocation of registered Trademark may also be requested by a relevant third party in the form of a lawsuit to the Commercial Court on the grounds that the Trademark has not been used for 5 (five) consecutive years in a course of trades of goods and/or services as of the date of registration or last use;’ to declare that the phrase ‘similar prohibitions’ in Article 74 paragraph (2) letter c of Law No. 20 of 2016 on Trademarks and Geographical Indications unconstitutional and not legally binding if not interpreted as ‘force majeure conditions.’ Thus, Article 74 paragraph (2) letter c of Law No. 20 of 2016 on Trademarks and Geographical Indications should read: “c. similar prohibitions, including force majeure conditions as determined by a Government Regulation,’” said Chief Justice Suhartoyo delivering the verdict in Decision No. 144/PUU-XXI/2023.
Trademark Disputes, Scope of Implementation
At the same hearing, the Constitutional Court also handed down Decision No. 162/PUU-XXI/2023. The petition was submitted by Djunatan Prambudi.
In its legal considerations, delivered by Constitutional Justice Enny Nurbaningsih, the Court asserted that the Petitioner did not clearly explain the connection between the norm in Article 21 paragraph (1) of the Trademark Law and the principle in Article 27 paragraph (1) of the 1945 Constitution, which guarantees equality before the law and government. Therefore, this issue was not considered relevant for review.
Regarding the assumption of a conflict with Article 27 paragraph (2) of the 1945 Constitution, the Court found that if this right is related to the Petitioner’s trademark dispute, then this issue falls within the scope of norm implementation and not constitutionality. In several Constitutional Court decisions related to trademark disputes or the application of Article 21 paragraph (1) of the Trademark Law, which the Petitioner believes is open to multiple interpretations, the Court observed that the rejection of trademark registration was applied on a case-by-case basis, according to each specific disputed trademark. Thus, it cannot be directly linked to the issue of constitutionality of the norm.
Additionally, the Court also noted the Petitioner’s concern about the vulnerability of various parties filing trademark cancellation lawsuits if there is similarity with another party’s trademark, and then subsequently being rejected by the judge. The Court deemed this a logical consequence of the application of trademark protection rights, as long as it meets the requirements set forth in Article 21 paragraph (1) of the Trademark Law. In other words, Justice Enny continued, this pertains to norm implementation rather than the issue of constitutionality.
“Therefore, there is no issue of legal uncertainty in Article 21 paragraph (1) of Law No. 20 of 2016, and thus the norm in question does not violate the rights regulated in Article 27 paragraphs (1) and (2) of the 1945 Constitution. Consequently, the Petitioner’s claim that Article 21 paragraph (1) of Law No. 20 of 2016 conditionally conflicts with Article 27 paragraphs (1) and (2) of the 1945 Constitution is legally groundless,” emphasized Constitutional Justice Enny Nurbaningsih.
As a result, in its ruling, the Court rejected the petition by Djunatan Prambudi in its entirety. “[The Court] adjudicated, to reject the Petitioner’s petition in its entirety,” said Chief Justice Suhartoyo delivering the verdict in Decision No. 162/PUU-XXI/2023.
Also read:
Provision on Trademark Removal Challenged
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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.
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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 had 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 believed the provision had 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 requested 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 : Raisa Ayuditha Marsaulina
Translator : Intana Selvira/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.
Tuesday, July 30, 2024 | 17:36 WIB 220