On August 21st 2023 a registered trademark in class 30, BABON (Registration No. IDM000263236), was deleted by Surabaya Commercial Court for specific goods. This court decision is based on a deletion action filed by Amatus Slamet Budiono (Plaintiff) against Soetanto (Defendant), all Indonesians. The Plaintiff was able to prove Defendant’s failure to use his registered BABON trademark for some goods for more than 3 (three) consecutive years since its registration date.

In its decision, the Commercial Court stated that the Plaintiff succeeded in proving that the BABON trademark, registered by the Defendant for more than 10 years ago, was only used on a certain product, which is rice noodles and / or vermicelli.  The Plaintiff was unable to register his BABON NY. DJUARI trademark in Indonesia as the Defendant’s BABON mark had blocked Plaintiff’s application for registration. As the manufacturer of soy sauce, the Plaintiff only intends to use the mark for soy sauce but found that the registered BABON trademark owned by the Defendant is used only for rice noodles and / or vermicelli. The Defendant never use his BABON mark for soy sauce.

The Panel of Judges at the Surabaya Commercial Court accepted the Plaintiff’s arguments and evidence showing Plaintiff’s market surveys in several cities, including Tulungagung in East Java where the Defendant has been running his rice noodles business for years. The market survey was conducted to find if there are any traditional markets, grocery stores, department stores as well as supermarkets in some cities, have ever sold BABON soy sauce manufactured by the Defendant. The results of the survey revealed that not a single trader knew or sold BABON soy sauce that was manufactured by the Defendant.

Plaintiff’s Trademark

(Trademark Application No. DID2023038602)

(Trademark Application No. DID2023038605)

Defendant’s Trademark

Defendant’s Trademark

(Registration No. IDM000263236, formerly Registration No. 509943)

Based on the evidence presented by the Plaintiff, including testimonies from witnesses who were aware that the Defendant has never used his BABON mark for soy sauce, the panel of judges agreed that the Defendant was proven to have never used his registered BABON trademark for more than 10 years since its registration date. The ruling of the Surabaya Commercial Court is as followed:

VERDICT:

IN THE PLEADINGS:

• To reject Defendant’s pleadings entirely;

IN SUBSTANCE OF THE CASE:

1. To grant Plaintiff’s demands entirely;
2. To declare that the Plaintiff is acting as a third party who is legitimate to submit a deletion action of the registered BABON Trademark (Registration No. IDM000263236, formerly Registration No. 509943) in class 30 in the name of the Defendant for some specific goods namely soy sauce;
3. To declare that the BABON Trademark (Registration No. IDM000263236, formerly Registration No. 509943) in class 30 in the name of the Defendant, has not been used for 3 (three) consecutive years or since the last use of the mark for some goods namely soy sauce;
4. To delete or at least to declare of deletion of the registered BABON trademark (Registration No. IDM000263236, formerly Registration No. 509943) in class 30 in the name of the Defendant for some specific goods namely soy sauce;
5. To instruct the Clerk of the Surabaya Commercial Court to serve a copy of this court decision to the Trademarks Office (Directorate of Trademark and Geographical Indication at the Directorate General of Intellectual Property of the Indonesian Ministry of Law and Human Rights), to implement this court decision in accordance to the Articles 91 and 92 of the Law No. 20 of 2016 concerning Trademark and Geographical Indication;
6. To ask the Defendant to pay for the court fees in the amount of IDR 999,000.00 (nine hundred and ninety-nine thousand rupiah).

In response to the decision, Donny A. Sheyoputra as the Plaintiff’s attorney, conveys his appreciation to the Panel of Surabaya Commercial Court Judges for accepting Plaintiff’s lawsuit and deleting Defendant’s registered BABON trademark for soy sauce. “Hopefully with this decision, our client’s BABON NY. DJUARI mark which has been applied for registration by our client, Mr. Amatus Slamet Budiono, can be quickly registered at the Trademarks Office without any further obstacle caused by the Defendant’s BABON trademark as it has been deleted for some goods on the basis of non-use. We extend our appreciation to the Panel of Judges who have accepted and granted the deletion action of the Defendant’s trademark, ” said Donny A. Sheyoputra.