Indonesia Trademark Cancellation and Bad-Faith Filings: What the ANTMINER Case Shows

Photo: David Kristianto / Unsplash

Indonesia is a first-to-file country. Article 3 of Law No. 20 of 2016 on Marks and Geographical Indications states that the right to a mark is obtained after the mark is registered. A foreign brand that has sold into Indonesia for years, but never filed there, can find a local company already holding the registration.

The law does give the original owner a way back. A registered mark can be cancelled by a lawsuit at the Commercial Court, and Article 77(2) of the law lifts the usual five-year deadline when the registration was filed in bad faith.

The legal basis: Articles 21, 76 and 77

Article 21 lists the relative grounds for refusal. Under Article 21(1), an application is refused if the mark is substantively similar to, or identical with, an earlier registered mark or application for similar goods or services, or a well-known mark of another party. Article 21(3) adds a separate ground: an application is refused if it is filed by an applicant in bad faith.

The Elucidation of Article 21(3) describes a bad-faith applicant as one who files with the intention of imitating or copying another party's mark for its own business interest, creating unfair competition or misleading consumers.

Article 76 turns these refusal grounds into cancellation grounds. An interested party may sue to cancel a registered mark based on Article 20 and/or Article 21. The case is filed at the Commercial Court against the registered owner. Article 76(2) matters most to foreign owners: the owner of an unregistered mark may bring the lawsuit only after filing its own application with the Minister of Law.

Article 77(1) sets a limit of five years from the registration date. Article 77(2) removes that limit where there is bad faith, or where the mark conflicts with state ideology, laws, morality, religion, decency or public order. Under Article 78, the Commercial Court decision can be appealed to the Supreme Court by cassation.

The case: Bitmain and the ANTMINER registrations

Bitmain Technologies Pte. Ltd., a Singapore company affiliated with the Chinese crypto-mining hardware maker Bitmain, had used ANTMINER on mining machines since 2013, according to a case report published by the law firm Rouse. A local IT company, PT Vast Palaso Cyberindo, registered five marks containing ANTMINER between 2017 and 2021 and sold mining machines under them.

Before suing, Bitmain filed its own Indonesian application for ANTMINER in Classes 9, 35, 38 and 42 on 18 June 2024. That application gave it standing under Article 76(2). It filed the cancellation suits at the Central Jakarta Commercial Court in August 2024.

The defendant argued that its registrations were valid, that Bitmain had no prior rights in Indonesia, and that at least one registration (granted on 1 July 2019) was more than five years old by the time of the suit. Bitmain relied on Article 77(2), which lifts the time limit where there is bad faith. The published summaries of the judgment do not say how the court dealt with the time-bar argument. Rouse reads the outcome as showing that proving bad faith can get a claimant past the five-year limit, which is a reasonable interpretation of the result but not a point the summaries record the court as deciding.

The evidence was specific. It included a 2013 product manual, trademark filings abroad going back to 2014, use in Indonesia from 2015, and the defendant's own 2017 website post stating that ANTMINER belongs to Bitmain. Bitmain also showed that the defendant sold genuine Bitmain machines on Instagram while presenting itself as an official channel.

On 21 November 2024, the court found that all five registrations were filed in bad faith in breach of Article 21(3), cancelled them, and confirmed Bitmain as the owner of ANTMINER, entitled to pursue its own application. Tilleke & Gibbins, which says it assisted Bitmain in the lawsuits through a local litigation partner, reports that the court likewise invalidated the local party's BITMAIN mark, finding it identical to Bitmain's company name, and ordered the Directorate General of Intellectual Property (DJKI) to remove the marks from the register.

What foreign counsel can take from it

File before you litigate. If your client has no Indonesian application, the court can dismiss the claim for lack of standing under Article 76(2), however strong the merits.

Consider bad faith when the registration is old. The five-year limit in Article 77(1) can defeat a well-known-mark claim on its own, while Article 77(2) lifts it for bad faith. Bitmain did not rely on well-known status, and Rouse suggests this may have been partly because some registrations were over five years old and partly because the evidence of fame in Indonesia was thin.

Collect evidence from the filing date. Bad faith is judged at the time the squatter applied. Dated manuals, early foreign filings, and the squatter's own statements carried this case.

Keep non-use in reserve. Article 74 allows removal of a mark not used for a set period. Constitutional Court Decision No. 144/PUU-XXI/2023, read on 30 July 2024, extended that period from three to five consecutive years and added force majeure as an excuse for non-use. Tilleke & Gibbins noted in August 2024 that the government still needs to issue an implementing regulation for the force majeure exemption, and that until then force majeure is not yet a valid reason for not using a registered mark. Against an active squatter that sells goods under the mark, non-use rarely helps, which is why bad faith was the right route here.

The simplest protection is still to file in Indonesia, in the core classes, before the product arrives.

Sources

• Law No. 20 of 2016 on Marks and Geographical Indications, official Indonesian text (DJKI)
• Law No. 20 of 2016, English translation (ARISE+ / EU)
• Rouse, "When Bad Faith Trumps Time: ANTMINER's Successful Fight Against Trademark Squatting in Indonesia" (8 July 2026)
• Tilleke & Gibbins, "Indonesian Court Rules Against Bad-Faith Trademark Registrations"
• Tilleke & Gibbins, "Indonesian Court Extends Trademark Non-Use Period" (Decision No. 144/PUU-XXI/2023)