CHAPTER VI: DELETION AND CANCELLATION OF REGISTRATION OF A TRADE MARK
Part One: Deletion
Article 51
- The deletion of trade mark registration from the General Register of Trade Marks shall be done by the Trade Mark Office either at its own initiative or at the request of the owner of the trade mark concerned.
- The deletion of the registration on the initiative of the Trade Mark Office may be done if:
- the trade mark has not been used for 3 (three) consecutive years or more for trade in goods and or services from the date of registration or of the last use, except there is excuse which is acceptable to the Trade Mark Office; or
- the trade mark is being used for the kind of goods and or services which is not in pursuant to the kind of goods and or services for which the trade mark application for registration was filed, including the use of trade mark which is not in accordance with the registered trade mark.
- The reasons as referred to in paragraph (2) letter a are:
- import prohibition;
- prohibition related to the permit for the distribution of goods using the trade mark concerned or any temporary decision from the competent authority;
- other similar prohibitions imposed by Government Regulation.
(4) The decision of registration of a trade mark as referred to in paragraph (2) shall be recorded in the General Register of Trade Marks, and shall be announced in the Official Gazette of Trade Marks.
(5) Objection to the decision to delete the registration of a trade mark as referred to in paragraph (2) may be submitted to the District Court of Central Jakarta or any other district courts to be stipulated in a Presidential Decree.
Article 51A
- A request for the deletion of registration of a trade mark by the owner of the trade mark, either for all or for part of the kinds of goods and or services belonging to one class, shall be submitted to the Trade Mark Office.
- Where the trade mark as referred to in paragraph (1) is still bound by a valid licensing agreement, deletion may only be done with a written consent of the licensee.
- Exception as to the consent of the licensee as referred to in paragraph (2) may only be made possible where the licensee clearly agrees to waive such consent in the licensing agreement.
- The deletion of registration of a trade mark as referred to in paragraph (1) shall be recorded in the General Register of Trade Marks, and shall be announced in the Official Gazette of Trade Marks.
- The recording of deletion of a registered trade mark as referred to in paragraph (4) shall be subject to a fee, the amount of which shall be stipulated in a Ministerial Decree.
Article 52
Third parties shall also be able to file a request for the deletion of the registration of a trade mark based on reasons as referred to in Article 51 paragraph (2) letter a and letter b in the form of a claim filed at:
- The District Court of Central Jakarta; or
- Other District Courts to be stipulated in a Presidential Decree.
Article 53
- The decision of a District Court as referred to in Article 52 may not be appealed, instead, a cassation or an application for a reconsideration may directly be submitted to the Supreme Court.
- A copy of the decision of the Court as referred to in paragraph (1) shall be forwarded by the Clerk of the District Court concerned to the Trade Mark Office within 14 (fourteen) days at the latest as from the date of said decision.
- The Trade Mark Office shall execute the deletion of the trade mark concerned from the General Register of Trade Marks and announce it in the Official Gazette of Trade Marks if the lawsuit for the deletion of registration of a trade mark has been awarded and the decision of the Court as referred to in paragraph (1) has become final and binding.
Article 54
(1) The deletion of the registration of a trade mark shall be carried out by the Trade Mark Office by crossing out the trade mark concerned in the General Register of Trade Marks and noting the reasons for and the date of said deletion.
(2) The deletion of the registration of a trade mark as referred to in paragraph (1) shall be made known in writing to the owner of the trade mark or his proxy, stating the reasons therefor and stressing that as of the date of deletion from the General Register of Trade Marks, the Trade Mark Certificate concerned shall be declared to be null and void.
Article 55
The deletion of the registration of a trade mark shall have the result that the legal protection of the trade mark concerned shall cease.
Part Two : Cancellation
Article 56
- A lawsuit for cancellation of a registered trade mark may be filed by an interested party based on the reasons as referred to in Article 4 paragraph (1), Article 5 or Article 6.
- A lawsuit as referred to in paragraph (1) may not be submitted by the owner of an unregistered trade mark.
- The owner of an unregistered well-known trade mark may file a lawsuit as referred to in paragraph (1), after having filed an application for registration of his trade mark to the Trade Mark Office.
- The lawsuit for cancellation as referred to in paragraph (1) shall be filed against the owner of the mark and the Trade Mark Office through the District Court as referred to in Article 52.
- Where the owner of the trade mark against which the lawsuit for cancellation has been made is domiciled outside the jurisdiction of the Republic of Indonesia, the lawsuit shall be filed at the District Court of Central Jakarta.
Article 57
(1) A claim for cancellation of the registration of a trade mark shall be filed within a period of 5 (five) years after the date of registration of the trade mark.
(2) Exempted from the provision as referred to in paragraph (1), a claim for the cancellation of a trade mark may be filed without a time limit if the trade mark concerned should have not been registered because it contains elements contrary to morality and the public order.
Article 58
- The decision of the District Court for cancellation as referred to in Article 56 paragraph (4) may not be appealed, instead, a cassation or an application for a reconsideration may be directly be submitted to the Supreme Court.
- A copy of the decision of the Court as referred to in paragraph (1) shall be forwarded by the Clerk of the Court concerned to the Trade Mark Office within 14 (fourteen) days at the latest as from the date of said decision.
- The Trade Mark Office shall execute the cancellation of the registration of the trade mark concerned from the General Register of Trade Marks and shall announce the cancellation in the Official Gazette of Trade Marks when the lawsuit for the cancellation of said trade mark has been awarded and the decision of the Court as referred to in paragraph (1) has become final and binding.
Article 59
(1) The cancellation of the registration of a trade mark shall be carried out by the Trade Mark Office by crossing out the mark concerned in the General Register of Trade Marks and noting the reasons for and the date of said cancellation.
(2) The cancellation of registration of a trade mark as referred to in paragraph (1) shall be made known in writing to the owner of trade mark or his proxy, stating the reasons therefor and stressing that as of the date of deletion from the General Register of Trade Marks, the Trade Mark Certificate concerned shall be declared to be null and void.
(3) The crossing out of the registration of a trade mark in the General Register of Trade Marks as referred to in paragraph (1) shall be announced in the Official Gazette of Trade Marks.
Article 60
The cancellation of the registration of a trade mark shall have the result that the legal protection of the trade mark concerned shall cease.