The Door With No Clock

A client arrives with the same problem every few months. Their mark — registered across thirty jurisdictions, in use since the 1990s — is held in Indonesia by a company nobody at headquarters has heard of. The registration is six years old. Their regional counsel has advised that the five-year window for a cancellation action closed last year, and the only remaining route is to prove non-use.

That advice is wrong, and the error is expensive.

What Article 77 actually says

Article 77 of Law No. 20 of 2016 on Marks and Geographical Indications has two paragraphs. Almost all of the advice circulating about Indonesian cancellation deadlines rests on the first and ignores the second.

Paragraph (2) is not an exception to be argued for. It is a separate rule with its own trigger. Where bad faith is present, paragraph (1) does not apply at all — there is no deadline to extend, waive or excuse, because none ever attached.

The ground itself sits in Article 21(3), and it is one sentence:

Read together with Article 76, which permits an interested party to bring a cancellation action before the Commercial Court on the grounds set out in Articles 20 and 21, the structure is complete: bad faith is a ground for cancellation, and cancellation on that ground has no limitation period.

Why non-use is the weaker claim against a squatter

Foreign counsel reach for non-use because it feels factually simpler: the registrant is not selling anything, so prove that. In practice it is the harder claim and the easier one to defend.

The token-use problem deserves particular attention. A registrant facing a non-use claim can produce a small print run, a handful of marketplace listings and two invoices, all dated after the writ. Indonesian courts have disregarded such use in at least one reported instance, but the practice is not uniform. A claimant who chose the non-use route has handed the defendant a defence costing a few million rupiah.

Bad faith offers no equivalent escape. The question is what the applicant knew on the filing date, and no amount of later activity changes that fact.

What actually proves bad faith

Indonesian courts have historically read bad faith narrowly, and foreign claimants have lost cases they expected to win. The claims that succeed are the ones built on documents rather than on the obviousness of the wrong.

A decision of the Central Jakarta Commercial Court in November 2024 illustrates the pattern. The claimant, a manufacturer of cryptocurrency mining hardware, sought cancellation of registrations for its BITMAIN and ANTMINER marks held by a local party. The court cancelled both and ordered the Directorate General of Intellectual Property to remove them from the register. The findings rested on four concrete points:

• The marks had been used and registered in numerous countries long before the Indonesian applications were filed.
• The registered mark was identical to the claimant’s own corporate name.
• The defendant had been using the marks to sell the claimant’s own machines — establishing that it knew exactly whose marks these were.
• The defendant’s own website carried a statement acknowledging that BITMAIN and ANTMINER belong to the claimant.

The fourth point is the one worth dwelling on. The defendant defeated itself through its own published material. In squatting cases the decisive evidence is very often sitting in public: a reseller page, a product description, a social media post, an import declaration. It needs to be captured and authenticated before the defendant takes it down.

Pairing bad faith with the well-known mark ground

Article 21(1) is usually pleaded alongside Article 21(3), and the two reinforce each other. Paragraph (1)(b) covers a mark with essential or total similarity to another party’s well-known mark for similar goods or services; paragraph (1)(c) extends that to dissimilar goods where certain conditions are met.

Establishing well-known status is a documentary exercise with a published checklist. Indonesian registration practice applies nine criteria, now governed by Regulation of the Minister of Law No. 5 of 2026 on Trademark Registration:

1. The level of public knowledge or recognition of the mark in the relevant business sector
2. Sales volume of the goods or services, and the profit derived from use of the mark
3. The market share the mark holds in relation to circulation
4. The geographic reach of the mark’s use
5. The duration of the mark’s use
6. The intensity and promotion of the mark, including investment spent on promotion
7. Registration or applications for registration of the mark in other countries
8. The record of successful enforcement in trademark matters, particularly as regards recognition
9. The value attaching to the mark derived from reputation and assurance of the quality of the goods

Criteria 7 and 8 are frequently under-used. A portfolio of foreign registrations, and a history of successful oppositions or enforcement elsewhere, are both documentary and both within the claimant’s own control. They do not depend on persuading an Indonesian court about consumer perception in Indonesia, which is the hardest part of the exercise.

Procedure decides more cases than the merits

This is the point on which foreign claimants most often lose, and it has nothing to do with the strength of their rights.

Cancellation actions are brought before the Commercial Court, which applies its procedural rules strictly. A defect in a filed claim cannot be cured. An analysis of published non-use decisions found eleven claims dismissed on procedural grounds, four rejected on the merits, and ten marks successfully cancelled — meaning more claims failed on procedure than were decided on substance at all. The recorded procedural failures included adding grounds for cancellation beyond those pleaded, and seeking relief beyond the court’s authority to grant.

Three consequences follow for a claimant preparing an action:

• Plead every ground at the outset. Grounds cannot be added later. If both Article 21(1) and Article 21(3) are available, plead both.
• Keep the relief sought within what the court can order. Cancellation of the registration and an order directing the Directorate General to record the cancellation. Not damages that belong in a separate action, and not declarations the court has no power to make.
• Get the claimant’s standing right. Article 76 requires an interested party. Where the group entity holding the foreign registrations differs from the entity trading in the region, settle which one sues, and document the connection, before filing.

Practical sequence

1. Search the register first, not after a problem appears. An audit of the Indonesian register against the global portfolio costs little and surfaces exposure while options remain open.
2. Capture the public evidence immediately and properly. A notarised screen capture of the defendant’s website taken this week is worth more than a dispute next year about what it said. Defendants take pages down once a letter arrives.
3. Decide whether to send a letter at all. A demand letter warns the squatter and may trigger both evidence destruction and manufactured use. Where the evidence is already captured and the claim is ready, filing first is often the better course.
4. Plead Article 76 with Article 21(3), relying on Article 77(2). Add Article 21(1)(b) or (c) where well-known status can be documented against the nine criteria.
5. Prepare for cassation. Trademark cancellations are routinely appealed to the Supreme Court. Build the first-instance record with that in mind, because the evidentiary position is largely fixed by then.
6. Register defensively once the mark is recovered. Cancelling one registration does not prevent the next filing. Secure the classes that matter, and the variants.

The short version

If a mark was taken in bad faith, there is no deadline. Article 77(2) says so in terms. The practical difficulty is never the limitation period — it is assembling documentary proof of what the registrant knew when it filed, and bringing the action in a form the Commercial Court will accept.

Counsel who advise that the window has closed are reading paragraph (1) and stopping there.

Sources

• Law of the Republic of Indonesia No. 20 of 2016 on Marks and Geographical Indications — Articles 20, 21(1), 21(3), 74, 76, 77(1), 77(2)
• Regulation of the Minister of Law No. 5 of 2026 on Trademark Registration, enacted January 2026 and in force from 22 February 2026, revoking Regulation of the Minister of Law and Human Rights No. 67 of 2016 and No. 12 of 2021 (accessed 5 October 2026)
• Decision of the Constitutional Court No. 144/PUU-XXI/2023, 30 July 2024 — mkri.id
• Central Jakarta Commercial Court, November 2024 — BITMAIN and ANTMINER cancellation, as reported by Tilleke & Gibbins (accessed 3 October 2026)
• Analysis of published non-use decisions — Rouse (accessed 3 October 2026)
• LEXUS and BMW disputes — Asia IP Law (accessed 3 October 2026)

Related: what Decision 144 changed, and what it left untouched