Indications are that the Commercial Court is relaxing its very strict evidential rules, making it easier for trade mark owners to delete unused pirated marks.

Years of the Trade mark Office's narrow application of trade mark principles has left the Register littered with problematic trade marks. These range from pirate trade marks that have been all but abandoned by their local owners, to descriptive and non-distinctive marks. For the cautious trade mark owner, these can present a significant challenge even if they are not in use.

There is no simple method for clearing the Register of unused trade marks. The Trademark Director rarely exercises his statutory discretion. Often the only option is to bring non-use deletion proceedings in the Commercial Court. In deletion proceedings, the plaintiff seeking deletion must prove non-use. The burden of proof does not shift to the defendant trade mark owner upon a certain threshold being met. Even in undefended proceedings the plaintiff must prove non-use to the satisfaction of the Court.

Proving non-use can be problematic. The cautious approach is to obtain evidence from market surveys in key population centres. However, market surveys alone are not conclusive. Proving a trade mark is not used in one region does not itself prove that it is not used in Indonesia at all.

Recent Commercial Court decisions indicate that the court is taking a more practical approach to the issue. In Pt Pacific Millenia Pangan Makmur vs Pt Ambala Mas, the Commercial Court accepted evidence from the food and drug agency that no products bearing the trade mark were registered with the agency as conclusive evidence of non-use. Similarly, in The Garden Company Limited vs Pt Serena Indopangan Industri the plaintiff succeeded in deleting the defendant's trade mark based on an investigator's report and confirmation from the food and drug agency that no products bearing the trade mark were registered with the agency.

Neither case was appealed, so it remains to be seen if the Supreme Court shares the Commercial Court's more relaxed approach to proving non-use.

Brett McGuire

Rouse
Suite 701, Wisma Pondok Indah 2
Jl Sultan Iskandar Muda Kav V-TA
Pondok Indah, Jakarta 12310
Indonesia
Tel: +62 21 769 7333
Fax: +62 21 769 7505
bmcguire@iprights.com
www.iprights.com