Tilleke & Gibbins recently assisted Bitmain, a leading manufacturer of cryptocurrency mining hardware, in successful cancellation action lawsuits against BITMAIN and ANTMINER trademarks that were unlawfully registered by a local party in Indonesia.

Background

Founded in 2013, Bitmain is a leading manufacturer of digital currency mining servers, marketed under their BITMAIN and ANTMINER brands. The company has maintained a strong global market share, with customers in over 100 countries and regions.

In Indonesia, Bitmain has held the BITMAIN trademark registration in classes 35, 36, 41, and 42 since 2018. However, the company was unable to register the trademark in other classes because a local party had already registered the mark in the desired classes. Bitmain also discovered that their ANTMINER brand had been registered by the same local party, which impeded Bitmain’s application to register the ANTMINER trademark in Indonesia.

Bitmain had been using these trademarks and products worldwide long before the local party’s registration in Indonesia, and had also secured trademark registrations in various countries. However, the local party exploited Indonesia’s first-to-file principle, securing the BITMAIN and ANTMINER trademarks before Bitmain could file. This was a classic example of trademark squatting, where a party registers a foreign trademark in a jurisdiction where the original owner has not yet filed, with the intent to profit from the brand’s success.

Initial Approach

Upon discovering that the local party had made these trademark applications, Bitmain found that one of these applications was still in the publication period. We advised and assisted Bitmain to file opposition against the application, but this opposition was subsequently refused because the local party had already obtained identical BITMAIN trademarks in other classes. Consequently, the application was registered in the Trademark Office database.

Following the unfavorable opposition decision, we initially worked with Bitmain to seek a mutually satisfactory settlement, first by seeking voluntary deletion or assignment of the BITMAIN and ANTMINER registered trademarks. However, the local party declined Bitmain’s request and insisted on resolving the case through mediation or litigation. After considering their options, Bitmain decided to file cancellation lawsuits against the trademarks.

To support the lawsuits, thorough research and investigation on the trademark squatter were conducted to gather evidence supporting Bitmain’s argument. This step was crucial in strengthening Bitmain’s case, particularly in demonstrating the local party’s bad-faith intentions and the impact on Bitmain’s business. In the investigation, it was revealed that the adversary had been using BITMAIN and ANTMINER trademarks to sell Bitmain’s ANTMINER products in Indonesia. In addition, the investigation found that the adversary owned a website explicitly stating that BITMAIN and ANTMINER trademarks are owned by Bitmain.

Litigation Process

After gathering the necessary evidence through investigations, Bitmain, through Tilleke & Gibbins’ local litigation partner, filed two cancellation actions against the local party in the Central Jakarta Commercial Court, citing bad faith as the main legal basis for the lawsuits.

After numerous hearings, in November 2024 the judges ruled in favor of Bitmain, ultimately declaring that Bitmain is the rightful owner of the BITMAIN and ANTMINER trademarks. We were able to successfully convince the Commercial Court that the local party filed the trademarks in bad faith, as the trademarks are identical to Bitmain’s trademarks, which had been used and registered in various countries long before the bad-faith applications. The Commercial Court also held that the local party’s BITMAIN trademark is identical to Bitmain’s legal entity name.

Furthermore, we successfully proved that the local party had been using these trademarks to sell Bitmain’s cryptocurrency mining machine, ANTMINER, which indicated that the trademarks had been registered with the intention of using them in commerce, potentially leading to unfair business competition and deceiving or misleading consumers. There was a high likelihood that consumers would assume the local party was affiliated with Bitmain, which was not the case.

Lastly, the local party’s bad faith was further highlighted by the explicit acknowledgment on their website stating that BITMAIN and ANTMINER are owned by Bitmain. Consequently, the court invalidated all of the trademarks and ordered the Directorate General of Intellectual Property to remove the trademarks from the Trademark Registry.

Outlook

Indonesia’s first-to-file system has faced numerous challenges, creating opportunities for trademark squatters to exploit the system. The results of the Bitmain case present a promising outlook for Indonesia’s intellectual property regime, suggesting that even though Indonesia has adopted the first-to-file principle, its application is not absolute—there are certain limitations, one of which is that the application cannot be made in bad faith.

Despite this success, certain challenges remain. Since cancellation actions are full litigation conducted in the Commercial Court, the process remains time-consuming and costly. Nevertheless, this case highlights the importance of addressing bad-faith intentions in trademark registration and serves as a reminder that the legal system can protect rightful trademark owners against unfair practices.

This article first appeared in Managing Intellectual Property.