chapter  23
12 Pages

Bad-faith registration of marks similar to well-known ones as ground for registration cancellation in Indonesia

WithPrayudi Setiadharma

The Supreme Court’s decision in the instant case confirmed that bad-faith registration is not subject to a time limit for filing a cancellation lawsuit, a position that had been indirectly implied by and yet was unclear under the provision of Article 69 of Law no. 5 of 2001 concerning Trademark. Cancellation of a trademark registration is one of the two legal actions that can be launched by a third party against a registered trademark under the Indonesian system of trademark registration, the other being the removal of a registered trademark from the Trademark General Registry. The Law no. 20 of 2016 concerning Trademark and Geographical Indication also provides more direct and yet more detailed elucidation of “applicant in bad faith” compared to Law no. 15 of 2001 concerning Trademark. The respondent is a German company that has been established since 1918 and is recognised as one of the world’s most prominent automotive manufacturers, with a strong market share in motorcycles.