By Carola Monintja
In this 21st century, globalization is part of our life. Our daily needs are no longer solely food, clothes, and shelter, but also information. Why do I say that? Well, when was the last time you read the newspapers, watched TV, listened to the radio or surfed the internet? All these forms of media are obvious sources of information.
With the advent of the internet and superfast download speeds, information can be acquired easily, and this in turn brought upon the rapid growth of media development in Indonesia. Now you can find roughly 54 TV stations (including local and cable), many internet service providers (including telecommunications companies who provide internet services via mobile phones), various forms of printed media (newspapers, magazine, tabloids, etc.)… it’s no wonder that building a media business sounds so promising.
Taking advantage of the booming media industry, Hendrawan, an entrepreneur from Bali, built his media empire with PT. Media Nusantara Gemilang, producing the Bali Tribune newspaper. The first edition of the Bali Tribune was published and circulated on 29 March 2010. Two years after its first publication, a trademark application for registration was filed for “Bali Tribune” under class 16.
However, the application process for “BALI TRIBUNE” was unsuccessful due the existence of registered trademark “TRIBUN BALI” (reg. no. IDM000130203 in class 16 owned by PT. Indopersda Primamedia), which has been registered since 20 July 2007.
Hendrawan realised that this situation was unfavourable for his business, and conducted an investigation on the “TRIBUN BALI” trademark which revealed that the trademark had not been used since its registration.
Pursuant to Article 63 of Law No. 15 Year 2001, re. Trademarks (“Trademark Law”), deletion due to non-use of a trademark (within 3 years as of its registration date) can be filed by a third party with a direct interest in the form of a lawsuit to the Commercial Court.
Hendrawan filed for the deletion of the “TRIBUN BALI” trademark based on non-use on 29 April 2014 at the Commercial Court in Jakarta.
However, the deletion lawsuit was not a smooth one, as it was discovered that PT. Indopersda Primamedia, the owner of the TRIBUN BALI trademark, had published TRIBUN BALI for the first time on 3 April 2014. Luck was not on Hendrawan side as he swallowed the bitter pill of a failed lawsuit when he could no longer rely on the non-use argument.
It certainly did not help when the judges decided on 9 September 2014 that Hendrawan had no locus standi to file the lawsuit as he was a majority shareholder and not a Director of PT. Media Nusantara Gemilang.
The deletion of a trademark registration by third parties based on non-use of a trademark is not easy. Naturally, the trademark owner will defend his/her trademark by any means. In this case, the third party claimed the trademark was not used, but later on the trademark owner managed to provide evidence of use. When filing a lawsuit for trademark deletion, the third party needs to gather sufficient and valid evidence to show the trademark in question is not used, and for this purpose it is always prudent to consult with an IP professional.