Indonesia's Non-Use Period Extended to 5 Years

In a recent case¹, the Constitutional Court of Indonesia granted the petitioner’s request to extend the non-use period. The petitioner, Ricky Thio, a micro, small, and medium enterprise (“MSME”) owner in the technology sector successfully argued for an extension which will have significant implications for the protection of trademarks in Indonesia.

Article 74 of Law No. 20 of 2016 on Trademark and Geographical Indications (“Trademark Law”) allows for a potential deletion of a trademark if it has not been used for three consecutive years in connection with the goods or services of the registered trademark. Therefore, it is important to use a registered trademark within three years of its registration to avoid deletion.

The current extension of the non-use period from three to five years has clear beneficial implications for MSME owners. The additional two years gives these businesses more time to register their trademarks and, concurrently, bring their products to market while dealing with dynamic challenges in the marketplace. We have seen these challenges in the recent past, including supply chain disruptions, inflation, and pandemic.

To be fair, we must also reflect on the detriments that may be result from the change. While MSMEs, SMEs, and genuine brand owners can enjoy a longer period to legitimately bring their newly branded goods and services to market, we must also recognize an industry of spurious brand owners that register trademarks with no intention of attaching products or services to them. Trademark “piracy” is on the rise globally, and it increases the costs for brand owners to protect their trademark portfolios around the world. The addition of two years to a non-use period allows for these trademark pirates to operate longer and require brand owners to wait longer before initiating deletion actions against these pirates.

Overall, we are extremely positive with this development. The Court highlighted that the previous three-year period, which had remained unchanged since the enactment of Law No. 19 of 1992, no longer aligns with Indonesia's current economic landscape, particularly given the growth of MSMEs. By extending the non-use period to five years, the Court aims to synchronize trademark cancellation timelines and ensure fairness for all trademark owners. Additionally, the Court expanded the scope of "other similar prohibitions" in Article 74 Paragraph (2) to include force majeure conditions, with further regulation to be detailed through a Government Regulation. We look forward to the detailed elaborations of force majeure conditions.

K&K Advocates has been the premier law firm for trademark owners globally. We stand ready to provide counsel to you and your businesses on how to maximize the value of these changes. If you need more information on the five-year non-use period or other intellectual property issues, please feel free to contact us.