Recent decisions from both the Indonesian Trade Mark Office (TMO) and the commercial courts show a shift in how bad faith is treated in trade mark rejection and cancellation cases. Bad faith is increasingly being treated as a standalone ground for rejecting and cancelling trade marks, not just an add-on to arguments about similarity or prior registrations.
The TMO is now using bad faith as a primary ground for rejecting trade mark applications during opposition proceedings. In the past, the TMO primarily relied on the existence of prior registered marks as the basis for rejection, and rarely issued decisions based on bad faith alone. In many cases, examiners believed that determining bad faith was the court’s responsibility and typically paired bad faith ground with similarity to prior marks. Recently, we are seeing decisions where bad faith is the sole ground for rejection, with a greater focus on the applicant’s use of the mark. This demonstrates a more comprehensive approach by the TMO, moving beyond the narrow assessment of simply comparing marks to prior registrations.
Recent court decisions for trade mark cancellations show that bad faith arguments are being accepted even when the plaintiffs do not establish that their mark is well-known. Bad faith claims are commonly argued together with well-known mark claim or require prior business relationship between plaintiff and defendants. Now, courts are willing to consider bad faith based on the similarity of use alone, without requiring well-known status.
In Supreme Court Decision No. 975 K/Pdt.Sus-HKI/2024, the Court held that the defendant’s use of its mark on packaging that is closely similar to the plaintiff’s products constituted evidence of bad faith, as such use was likely to create consumer confusion.
In Commercial Court Decision No. 3/Pdt.Sus-HKI/Merek/2025/PN Niaga Mdn, the Court compared the defendant’s use of the mark with the plaintiff’s products, which had the potential to mislead consumers, as one of the indications of bad faith.
Overall, these developments point to a more practical and balanced approach to trade mark examination and enforcement in Indonesia. This trend shows a shift towards bad faith being given greater consideration as an independent ground for both rejection and cancellation, leading to a more thorough and fair evaluation process.
If you have any questions or require any assistance in cancelling a trade mark based on bad faith in Indonesia, please contact Rouse Indonesia at TMGIndonesia@rouse.com.
