Indonesian court increases trademark non-use period

30 August 2024

Indonesia’s Constitutional Court has decided to extend the trademark non-use period from three years to five. This change comes after a judicial review request was filed by trademark owner Ricky Thio, who faced the potential cancellation of his trademark by Zhejiang Dahua Technology Co. on the grounds of non-use for three consecutive years. Thio’s appeal challenged the constitutionality of Article 74 of the Trademark Law, prompting the court to reconsider the existing regulations.

The Constitutional Court ruled in favour of extending the non-use period, emphasizing that this amendment aligns with international laws, including the Trade-Related Aspects of Intellectual Property Rights (TRIPS). A critical driving force behind this decision is the desire to support small and medium-sized enterprises (SMEs), which often need more time to develop and launch their products and services. By allowing a longer window before a trademark must be used, the court aims to prevent larger competitors from leveraging the shorter timeframe as a tool for unfair competition against smaller businesses.

Wongrat Ratanaprayul, Partner and Director, Tilleke & Gibbins, Jakarta

“With the change for non-use cancellation to five years instead of three years, IP owners will have a longer time to launch their brand into the market,” said Wongrat Ratanaprayul, a partner and director at Tilleke & Gibbins in Jakarta. “They will have five years to use their trademark without having to worry about it being cancelled for non-use.”

She added: “This change in the law can be a disadvantage. If a trademark squatter has registered a trademark, it will be even more difficult to cancel that trademark based on non-use. The plaintiff now has the burden of proving that a trademark has not been used for five years consecutively instead of the traditional three years.”

- Excel V. Dyquiangco

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