How to Claim a Registered Trade Mark?
Indonesia has become one of the investment destination countries in Southeast Asia. One of the concerns of local investors and businessmen in expanding their business here is the trademark regulation in designated country.
The last grab attention trademark disputes case was IKEA in 2016. The case started in 2013 when PT Ratania Khatulistiwa filed a lawsuit to Inter IKEA System BV as they are not entitled to use the ‘IKEA’ brand for the trademark classes 20 and 21 in conducting its business in Indonesia. Ratania claimed that they had already registered the ‘IKEA’ trademark first, which was an abbreviation of Intan Equator Esa Abadi.
The basic principle about brand registration in Indonesia is first-to-file. The exclusive right of a brand belongs only to the first entity to file the brand. There are many trademarks submitted for registration, but there are already similar or same trademarks that have already been registered. Even so, the registered brands are not necessarily on the market (non-use).
A registered trademark may be cancelled if it has not been used for three consecutive years in goods and / or services trade from the date of registration or use. In accordance with Article 74 paragraph (1) of the Trademark Law, a party who wants to claim the brand may file a lawsuit to the commercial court. In IKEA case, the brand had been registered since 2006 and 2010. However, when Ratania submit IKEA brand for its company in 2013, IKEA retail had not yet operated in Indonesia.
If a registered mark has not circulated in the market for a period of three years, a third party wishing to register the mark may file a claim for the registered trademark registration with the terms, one of which is evidence of unused trademarks in the market.
Therefore, an investigation needs to be done to confirm it. The investigation can be done by the third party itself, but will spend a lot of time. Therefore, it is strongly advised to use the services of a trusted and experienced investigator.
The investigator will then initiate an investigation by examining the database of the Directorate General of Intellectual Property, Ministry of Law and Human Rights of the Republic of Indonesia (DJKI) to find out the party who registered the brand. From the initial examination, the name of the registrant, address, product classification, brand logo, registration date, and expiry date of registered trademark can be obtained. Based on the initial information, an in-depth examination, via both field investigation and media search, will be conducted.
Field investigations are usually conducted in major cities in Indonesia depending on client expansion needs and focus on retail. The results of the investigation, including evidence, will be reported in the form of a signed statement from the retail party. This statement will be submitted as evidence to challenge the cancellation of the mark in the commercial court.