As a business owner, have you ever imagined if your trademark that has been registered and has such an essential role in the business but suddenly deleted and considered no longer get legal protection? Yes, as happened to IKEA, where on February 6, 2016, the IKEA trademark owned by Inter Ikea System B.V. was declared deleted and IKEA became the property of PT Ratania Khatulistiwa for classes 20 and 21. The deletion of the IKEA trademark owned by Inter Ikea System B.V. was based on the Supreme Court Decision (MA) which upheld the decision of the Central Jakarta Commercial Court. In fact, Inter Ikea System B.V. has registered the IKEA brand in Indonesia for a long time. So, is it true that a registered trademark can be removed? Why and what are the provisions for the removal of the trademark? So as not to be confused, see the full explanation below.
What are the Trademark Abolition Provisions?
According to Article of Law No. 20 Year 2016 on Trademarks and Geographical Indications (Trademark Law), rights to a trademark are obtained after the trademark is registered. The right to a trademark is an exclusive right granted by the state to the owner of a registered trademark for a period of 10 years (renewable). The trademark owner can use the trademark himself or give permission to other parties to use it (license). Well, although a registered trademark gets legal protection, but a registered trademark can be removed for three reasons. Where according to the Trademark Law, a trademark is deleted:
- At the request of the brand owner
- Removed by the Minister; or
- At the request of the other party
Removal of the Mark by the Owner
According to Article 72 paragraph (1) of the Trademark Law, the removal of a registered mark can be filed by the trademark owner to the Minister. The application for deletion can be submitted by himself or through his attorney. If the mark to be removed is still bound by a license agreement, then the removal can only be done if approved in writing by the licensee. It is excluded if in the license agreement, the licensee expressly agrees to waive the existence of such approval.
Abolition of Trademarks by the Minister
According to Article 72 paragraph (6) of the Trademark Law, the removal of a registered mark can be done at the initiative of the minister for the following reasons:
- Has similarities with geographical indications
- Contrary to state ideology, laws and regulations, morality, religion, decency, and public order
- Has similarity in its entirety to traditional cultural expressions, intangible cultural heritage, or names/logos that have been a tradition for generations
The deletion can be done after getting a recommendation from the Trademark Appeal Commission.
Trademark Removal by Other Parties
According to Article 74 paragraph (1) of the Trademark Law, the removal of a registered mark can also be filed by another party in the form of a lawsuit to the Commercial Court. Deletion by other parties can be done on the grounds that the trademark is not used for three consecutive years in the trade of goods and/or services since the date of registration or last use. The reason the trademark is not used as referred to in paragraph (1) does not apply in the event of the existence of:
- Import ban;
- Prohibitions relating to licenses for the circulation of goods using the relevant mark or decisions of the authorities that are temporary; or
- Other similar prohibitions stipulated by Government Regulation.
So, what can be done if the brand is removed?
If the owner of the trademark objected to the abolition of the trademark by the minister, then it can make a legal effort to file a lawsuit to the State Administrative Court (PTUN) (Article 73 paragraph (1) Trademark Law). Please note, the lawsuit filed with the Administrative Court is an administrative lawsuit. So that everything included in it is a lawsuit of State Administration (TUN) based on Law No. 51 Year 2009 on the Second Amendment to Law No. 5 Year 1986 on Administrative Court. In the PTUN Law, what becomes a state administrative dispute is a state administrative decision (KTUN). Based on Article 1 point 9 of the PTUN Law states that, KTUN is a written decision issued by a state administrative body or official that contains state administrative legal actions based on applicable laws and regulations, which are concrete, individual, and final, which have legal consequences for a person or civil legal entity. So that if it is associated with the abolition of the trademark by the minister as mentioned above, it can be interpreted that the decision to abolish the trademark is a KTUN. Therefore, the owner of the relevant trademark rights can sue the Administrative Court if he does not accept the decision to remove his registered trademark. In addition, if the trademark owner still objected to the decision of the Administrative Court, it is possible to take further legal remedies by filing a cassation to the Supreme Court (Article 73 paragraph (2) Trademark Law).
READ ALSO: Creating a Trademark, What Are the Things to Consider?
The existence of such provisions in the Trademark Act provides legal protection for trademark holders whose trademarks are removed. It can at least provide trademark rights holders to obtain the principle of certainty of the validity of the trademark.
KH Contact
Thus the explanation about the elimination of trademarks along with the reasons and provisions. For KH Pals who are still in doubt and have questions about trademarks, you can consult with Kontrak Hukum. Together with competent IPR consultants and registered with the DJKI Kemenkumham, you can consult whether or not your trademark meets the requirements, whether or not it is removed by the minister / other parties, to apply for legal remedies if your trademark is removed. Let’s protect your business brand safely by visiting the KH Services – Trademark page. If you have questions about IPR and other business needs, feel free to consult for free at Ask KH or send a direct message (DM) to Instagram @kontrakhukum.
