Indonesian trademark law provides a mechanism for cancelling registered trademarks that are not being used in commerce. Under Trademark Law No. 20 of 2016, a trademark registration may be cancelled by the Commercial Court on application by any interested party if the mark has not been used for three consecutive years from the date of registration or from the date it was last used in trade on goods or services covered by the registration. Understanding how this provision operates — and how to defend against a cancellation action — is critical for any business maintaining a trademark portfolio in Indonesia.
The Legal Basis for Cancellation
Article 74 of Trademark Law No. 20 of 2016 establishes non-use as an independent ground for cancellation. The cancellation action is heard before the Commercial Court in the district where the defendant (the registered trademark owner) is domiciled. Any interested party — which in practice typically means a competitor seeking to register a similar mark, or a party that has been threatened with infringement proceedings — may file the action.
The three-year period runs from the date of registration as recorded in the DGIP trademark register, not from the filing date. For older registrations, the relevant period begins from the last proven use of the mark in Indonesian commerce on the registered goods or services. Mere preparation to use a mark, or use outside the territory of Indonesia, does not satisfy the use requirement under Indonesian law.
What Constitutes Sufficient Use
Indonesian courts have interpreted "use" to mean genuine commercial use of the mark in the ordinary course of trade. This includes the direct sale of goods or services bearing the mark, the use of the mark in advertising directed at Indonesian consumers, and distribution through licensed third parties. Token use — minimal transactions carried out primarily to defeat a prospective cancellation action — is not accepted as genuine use and will not defeat a well-evidenced cancellation claim.
Use must cover the specific goods or services for which the mark is registered. A trademark registered for Class 5 pharmaceutical products cannot be preserved by use on Class 3 cosmetics, even if the same brand family is actively traded. Partial non-use, where the mark is used on only some registered goods or services, may result in a partial cancellation limiting the registration to the goods or services for which genuine use can be demonstrated.
Defending Against a Cancellation Action
A registered trademark owner facing a cancellation action must produce evidence of genuine use. Acceptable evidence includes official commercial invoices bearing the mark, customs clearance documents, packaging samples and photographs, advertising materials, distributor agreements with sales records, and sworn statements from licensed distributors or business partners. The evidence must be sufficiently contemporaneous with the three-year period under examination.
Where use has been interrupted by circumstances beyond the owner's control — such as import restrictions, regulatory delays in obtaining marketing authorisation, or documented supply chain disruptions — Indonesian courts may consider this as a valid justification for non-use. The owner bears the burden of proving both the circumstances and their causal link to the period of non-use.
Strategic Implications for Portfolio Management
The non-use cancellation mechanism creates an ongoing obligation for trademark portfolio managers. Dormant marks — registrations held as defensive filings, blocking marks, or legacy assets that are no longer actively traded — are vulnerable unless the owner can demonstrate genuine commercial activity. Portfolio audits should periodically identify registrations at risk, evaluate whether use can be demonstrated for each registered class, and determine whether non-use is justified or whether the registration should be allowed to lapse or narrowed through partial surrender.
For foreign brand owners with Indonesian registrations maintained through a local agent but without active commercial presence in Indonesia, this issue is particularly acute. The requirement for genuine local use means that a registration maintained solely through periodic renewals, without supporting trade activity, will not survive a well-prepared cancellation challenge.
CIPatent advises clients on both offensive and defensive non-use cancellation proceedings before the Commercial Court, as well as on proactive portfolio hygiene strategies to reduce cancellation risk across existing trademark registrations. For guidance on protecting or challenging a trademark registration, contact us at cipatent@cipatent.com.