144/PUU-XXI/2023
Constitutional Court
The trademark non-use period was extended from three years to five, and force majeure recognised as an exception. We acted as counsel in that matter.
Granted in part · 30 July 2024
Jakarta · Intellectual Property & Commercial Litigation
We act in Indonesian trademark and intellectual property disputes, and we argued the constitutional case that reshaped the rules we now litigate under.
Precision in strategy. Integrity in counsel.
On 30 July 2024 the Constitutional Court of the Republic of Indonesia extended the trademark non-use period from three years to five and recognised force majeure as an excuse for interruption. We acted as counsel in that matter.
The international commentary read the ruling as a shelter for dormant marks. It is not, and the reason turns on a point of doctrine the commentary passed over.
A trademark is a sign used in trade. Article 74 was never abolished and no right to warehouse registrations was created. What moved was the window, not the requirement.
Bad-faith registrations fall under Article 76 with Article 21(3). Article 77(2) removes any limitation period. Decision 144 did not alter a word of it.
Use should be proved by evidence of real commercial dealing, not by consumer surveys that measure advertising budget. The statute was enacted to protect MSMEs.
Record
The trademark non-use period was extended from three years to five, and force majeure recognised as an exception. We acted as counsel in that matter.
Eight bad-faith registrations cancelled and the mark held to be well known. A second action, in the retail services class, also succeeded in full.
A foreign food company’s cancellation claim was held obscure and inadmissible. Our client’s registration stands.
Pendampingan UMKM
Banyak UMKM kalah dalam sengketa bukan karena posisinya lemah, melainkan karena tidak ada biaya untuk membuktikannya. Padahal hukum menuntut hal yang sama dari usaha kecil maupun perusahaan besar: tunjukkan bahwa merek itu digunakan dalam kegiatan perdagangan.
Kami siap membantu, bahkan tanpa biaya. Konsultasi hukum awal kami berikan cuma-cuma. Untuk sejumlah perkara setiap tahun, kami mendampingi sampai selesai tanpa memungut biaya jasa — terutama perkara merek dagang, hak cipta, dan sengketa usaha. Jumlahnya kami batasi dan perkaranya kami pilih, karena mendampingi dengan sungguh-sungguh memakan waktu yang sama dengan perkara berbayar.
The same principle protects an Indonesian small trader and a foreign brand owner alike: what counts is whether the mark is used in trade, not the size of the business.
Practice Areas
Our practice centres on disputes over intangible assets and the commercial relationships built on them.
Insights
Analysis of developments affecting business, trade and intellectual property in Indonesia.
Article 77(2) removes every limitation period from a bad-faith cancellation. A registration taken in bad faith can be attacked years after it issued.
Read the analysisReserved classes and unlaunched variants are the entries a competitor targets first. Which of them could you evidence today?
Read the analysisCounsel’s own account of the five-year non-use period, and why the route against trademark squatters was never affected.
Read the analysisReserved classes and unlaunched variants are the entries a competitor targets first. What is now evidenceable, and what is not.
How the prevailing evidentiary method works, what it fails to detect, and what a substantively just standard would weigh instead.
Frequently asked
Short answers, each tied to the provision it comes from. None of this is legal advice on your matter.
Usually not. Indonesia is a first-to-file jurisdiction, but filing first does not cure bad faith. A cancellation action on the ground of bad faith is brought under Article 76 read with Article 21(3) of Law No. 20 of 2016, and under Article 77(2) that action is not subject to any limitation period. A registration obtained in bad faith can be attacked years after it issued.
The separate non-use route under Article 74 does have a window, and that window is what Decision 144/PUU-XXI/2023 changed.
Law No. 20 of 2016 arts. 21(3), 76, 77(2)
No. The decision reached Article 74 only, extending the non-use period from three years to five and recognising force majeure as an excuse for interrupted use. It did not touch Article 76, Article 21(3) or Article 77(2).
The route that actually defeats trademark squatting was left exactly as it was — including its absence of any time bar.
Decision No. 144/PUU-XXI/2023, 30 July 2024
A trademark is a sign used in trade. Article 1(1) of Law No. 20 of 2016 opens its definition with that requirement, and our position rests on that sentence. It runs in every direction: whoever trades is protected, whoever warehouses registrations is not.
What we contest is how use is proved. A small trader who sells every day often loses — not because they do not trade, but because the evidence demanded of them was designed for companies with advertising budgets. A consumer-recognition survey measures promotional spend, not trade. Invoices, tax records, marketplace transaction histories and packaging in circulation are what trade actually looks like, and those are precisely what a small enterprise has.
The recitals to Law No. 20 of 2016 name the protection of micro, small and medium enterprises among its purposes. An evidentiary standard that only a large advertiser can meet defeats that purpose from within.
The dividing line is use, not size. That is why this position does not cut against foreign proprietors who genuinely trade — they stand on the same side of it. The only party on the other side is one who registered a mark and never traded under it.
Law No. 20 of 2016 art. 1(1) and recitals
Not necessarily. A proprietor of a well-known mark may act even without a prior Indonesian registration, but the mark must be proved well known here. The criteria long applied in practice are knowledge among the relevant public, the duration and reach of use and promotion, registrations in other countries, successful enforcement, and the value attaching to the mark. Trademark registration is now governed by Permenkum No. 5 of 2026, in force since 22 February 2026.
Indonesian courts read this requirement strictly. The record needs to be built before the dispute, not after.
Permenkum No. 5 of 2026 (in force 22 February 2026)
A claim is filed at the Commercial Court, with cassation to the Supreme Court available afterwards. Court-annexed mediation under Supreme Court Regulation No. 1 of 2016 applies at first instance.
Published decisions show that more claims fail on procedure than on the merits, and the Commercial Court's procedural rules do not allow a defective filed claim to be cured. The route and the evidentiary position should be settled before anything is filed.
PERMA No. 1 of 2016
Invoices and tax records, customs and shipping documents, distribution and licensing agreements, marketplace transaction histories, product registrations and approvals, and packaging bearing the mark as registered. Each should tie to the goods or services in the class as filed.
Evidence that only shows promotion — advertising spend, impressions, a recognition survey — goes to reputation, not to use in trade.
Law No. 20 of 2016 art. 74
Contact
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