You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

August 30, 2024

Indonesian Court Extends Trademark Non-Use Period, Risking Far-Reaching Consequences

Subscribe to Updates
Managing Intellectual Property

As in many other countries, registered trademarks in Indonesia that are not used for a given period of time can be canceled. A recent decision (Decision No. 144/PUU-XXI/2023) from the country’s Constitutional Court has extended the non-use cancellation period from three years to five years, applicable from July 30, 2024. This ruling could have a major impact on trademark holders in the country.

Background of the Case

Article 74 of Indonesia’s Trademark Law of 2016 specifies that trademarks can be canceled if they go unused in the trade of goods or services for three consecutive years from the date of registration or last use. This provision is aligned with the Paris Convention and the TRIPs Agreement.

On October 27, 2023, an Indonesian individual named Ricky Thio asked the Constitutional Court to examine the constitutionality of Article 74, arguing that it opened a pathway for third parties to eliminate trademarks owned by small and medium-sized enterprises (SMEs), and did not provide certainty to his registered trademark in terms of the period of protection. Additionally, he argued that the period of three consecutive years was burdensome for SMEs, and asked the court to void Article 74 and add force majeure circumstances—such as Covid-19—as an exemption to non-use cancellation.

Mr. Thio submitted this request while he was defending his trademark registration from a non-use cancellation request filed by Zhejiang Dahua Technology Co., Ltd. In his defense to that cancellation request, Mr. Thio explained that the non-use of the trademark was due to the Covid-19 pandemic. The cancellation case followed a different judicial pathway, and was under appeal before the Supreme Court at the time Mr. Thio filed his request for judicial review with the Constitutional Court.

Mr. Thio’s case also attracted the submission of an amicus brief—a relatively new trend in Indonesia—from two IP consultants in the country. Their brief argued that Mr. Thio did not have a valid reason to file the suit with the Constitutional Court, as no personal rights had been violated. Also, they noted that the Trademark Law provided sufficient means for protecting Mr. Thio’s rights and interests.

Constitutional Court’s Decision

After considering the evidence, the Constitutional Court issued Decision No. 144, amending the period of non-use cancellation from three to five consecutive years from the registration date or the date of last use. The Constitutional Court also added force majeure as an exemption from non-use cancellation.

In examining the request for judicial review of Article 74, the Constitutional Court noted that:

  • The TRIPS Agreement mentions the three-year period as a minimum (i.e., “…the registration may be canceled only after an uninterrupted period of at least three years of non-use…”).
  • A five-year non-use period would align with the period for filing a trademark invalidation action, as a lawsuit for trademark invalidation can be filed within five years of the application date.
  • Indonesia has the authority to establish laws that do not contradict international laws the country has ratified.
  • In general, common-law countries (e.g., Singapore, the United Kingdom) have a five-year period due to the first-to-use principle, while civil-law countries (e.g., Japan) have a three-year period due to the first-to-file principle. Indonesia’s fundamental philosophy, pancasila, should empower and assist SMEs by providing them with more time to prepare for using and producing goods or services bearing their trademarks.
  • SMEs take more time than large companies to develop their business and to gather capital, and the three-year period could be a tool enabling unfair competition against SMEs.

Impact

Decision No. 144 came into force immediately. Starting from July 30, 2024, plaintiffs in non-use cancellation lawsuits must provide evidence that the concerned registered trademark has not been used for five consecutive years. This means that any interested third party may need to wait and observe longer before filing a non-use cancellation action. Those who were in the process of preparing a non-use cancellation action must ensure that their market survey has gathered evidence of non-use for a consecutive five-year period, which may entail waiting for up to another two years.

Theoretically, it will also take more effort to gather evidence of use. On the other hand, the additional period adds more time for trademark owners (including startups and SMEs) to form and refine their business plans.

While Decision No. 144 has granted force majeure as an exemption, the government will need to issue an implementing regulation for this. Force majeure is not yet a valid reason for not using a trademark registration in Indonesia.

As for the question of whether Mr. Thio gains any benefit from Decision No. 144 on the non-use lawsuit filed by Zhejiang Dahua, it may not matter much, as Zhejiang Dahua’s lawsuit was considered defective due to the improper formalities in the first instance. In May 2024, the Supreme Court confirmed the Central Jakarta Commercial Court decision to deem the lawsuit not acceptable as it combined the request to delete the registration with a request to register the company’s own trademark.

Ironically, Mr. Thio’s trademark was registered on June 2, 2017. Hence, it is still vulnerable to a non-use cancellation action as it has gone unused for more than five years. It seems that Mr. Thio may not be able to rely on Decision No. 144 to overcome any future non-use lawsuit if the concerned trademark continues to go unused.

Final Considerations

It is interesting to note that the Constitutional Court continued its judicial review of Article 74 even though it knew Mr. Thio was a defendant in an ongoing non-use cancellation lawsuit. Ideally, the Constitutional Court would have refused Mr. Thio’s request for judicial review in its entirety, as there was a strong indication that the decision might be used for avoiding the existing non-use cancellation lawsuit.

Decision No. 144 may inspire other parties in the future to view revoking a relevant provision from the IP laws as an alternative route to win a case. If the Constitutional Court does not forbid parties involved in an active legal action from submitting judicial review requests, there could be similar cases in the future, with infringers or trademark squatters asking for relevant articles to be deleted instead of directly responding to IP lawsuits. These “creative” constitutional lawsuits could result in repeated changes to Indonesia’s IP laws, possibly even affecting public order through a lack of legal certainty.

This article first appeared in Managing Intellectual Property.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

August 6, 2026
Introduction: A Trademark Paradox in Sustainable Packaging Walk into any Thai supermarket, and the label-free water bottle is no longer a novelty. Thailand’s packaging market, valued at approximately USD 15.68 billion in 2025, is shifting toward minimalist, plastic-light designs as ESG pressures reshape how brands present their products. The country generated roughly 5.68 million tons of plastic waste in 2021, with a recycling rate of only 19 percent, and regulators are now considering rules that would allow label-free bottled water relying on embossing, laser printing, or QR codes instead of wrap-around labels. As packaging itself becomes the brand identifier, a paradox emerges: designs built to say the least often struggle hardest for protection under Thai intellectual property law. The Trademark Barrier: When Shape Is Not Enough Section 7, paragraph 2(10) of the Thai Trademark Act deems a shape distinctive only if it is not the natural form of the goods, is not necessary to achieve a technical result, and does not add value to the goods. The Department of Intellectual Property’s 2022 examination guidelines apply this test conservatively, as the following examples illustrate. A plain water bottle relying on subtle contours to signal its brand is typically read as just another bottle, not a source identifier. Acquired distinctiveness offers a theoretical escape route, but it demands extensive evidence of sales, advertising, and consumer recognition—an especially heavy burden for new entrants whose minimalist packaging has not yet achieved market prominence. The result is a structural bias against precisely the design innovation that sustainability goals are meant to encourage. Design Patents: A Partial, Imperfect Substitute Design patent protection, covering a product’s shape, configuration, or ornamentation, appears to offer an alternative route. In practice, it is constrained by the same forces driving the minimalist trend. Because many brands converge on similar solutions—clear
Read More
August 4, 2026
Intellectual property (IP) protection sometimes hinges on fame and recognition. However, this alone will not always be sufficient to overcome an IP dispute when it involves contractual obligations or registered rights. Below are five cases from around the world that tackle some of the basic issues in IP registration, ownership, commercialization, and enforcement. 1. USA: Taylor Swift Trademark Application Refused Taylor Swift recently filed a trademark application to register “The Life of a Showgirl,” which is the title of her 12th studio album. When examining a trademark application, the examiner considers various factors before deciding whether it should be registered. One of these factors is whether there is a likelihood of confusion (i.e., would a regular consumer mistake the origin of the trademark). In Taylor Swift’s case, the US Patent and Trademark Office (USPTO) decided that that there would be a risk of confusion. This decision was based on the existing registered trademark, “Confessions of a Showgirl,” owned by Maren Wade, which was registered in 2015. The USPTO refused Taylor Swift’s application based on the shared key distinctive element “of a showgirl,” the lack of sufficient distinguishing terms, the marks being used in overlapping markets (entertainment and performances), and because consumers may assume a common commercial source. Maren Wade then filed a lawsuit in California against Taylor Swift and her affiliated companies, arguing that Taylor Swfit’s branding is confusingly similar in structure, wording, and overall commercial impression to her registered mark. She is also drawing on the USPTO’s refusal of Taylor Swift’s application to support her argument of a likelihood of confusion. A judgment has not yet been reached in this case, but it serves as an important reminder of the importance of satisfying the essential elements required for IP registration. 2. Australia: Katy Perry v. Katie Perry In
Read More
July 27, 2026
Vietnam’s new E-Commerce Law, which took effect on 1 July 2026 along with its implementing Decree No. 248/2026/ND-CP (Decree 248), marks a significant development in the country’s approach to online intellectual property (IP) enforcement, reflecting a clear shift from a reactive model of intermediary liability to one that expects platforms to play a more active role in preventing infringement. From notice-and-takedown to platform responsibility The most significant change introduced by the E-Commerce Law is the transformation of the legal role of e-commerce platforms. The existing safe harbor provisions under the IP Law and the copyright notice-and-takedown regime established by Decree 17/2023/ND-CP (Decree 17) largely required intermediaries to act only after receiving notice of infringement. Once infringing content had been removed, the platform’s legal obligation was generally considered fulfilled. The new legislation adopts a fundamentally different approach. Article 17 of the E-Commerce Law requires intermediary platforms to screen information relating to goods and services before publication in order to prevent listings involving counterfeit or IP-infringing goods, and goods of unknown origin. Rather than relying exclusively on complaints from rights holders, platforms are now expected to implement preventive measures before infringing listings become publicly available. Decree 248 further requires platforms to update keyword filters based on recommendations issued by competent authorities. These filtering mechanisms are intended to prevent prohibited listings from appearing on the platform and represent a further move away from a purely complaint-driven enforcement model. The legislation also introduces Vietnam’s first statutory stay-down obligation. Under the E-Commerce Law and Decree 248, major digital platforms must maintain automated systems capable of reviewing, warning against, and removing unlawful listings while also implementing measures to prevent repeat violations, defined under Decree 248 as conduct that has previously been identified and handled by the platform, but continues to recur. This obligation addresses one
Read More
July 27, 2026
Tilleke & Gibbins’ intellectual property specialists have authored the Thailand chapter of Trade Secrets 2026 from Chambers and Partners. This global guide examines the legal frameworks governing trade secret protection, enforcement, and litigation across jurisdictions worldwide. The Thailand chapter provides a comprehensive overview of the country’s legal regime for protecting confidential business information, covering the legal framework, trade secret misappropriation, litigation procedures, remedies, and dispute resolution. Some topics covered include: Protectable trade secrets Reasonable measures to maintain secrecy Employee confidentiality Trade secret licensing Civil and criminal remedies Litigation procedures and injunctions Damages and other remedies Mediation and arbitration The guide also examines practical issues relating to safeguarding trade secrets, defending against allegations of misappropriation, and managing trade secret disputes in Thailand. Chambers and Partners’ Global Practice Guides provide in-house counsel with authoritative commentary on practical legal issues affecting business, enabling readers to compare legislation and procedures across multiple jurisdictions. The Thailand chapter of Trade Secrets 2026 is available on the Chambers and Partners website.
Read More