Legal Construction of The First-to-File Principle in Indonesian Trademark Law

Abstract

The first-to-file principle is the foundation of Indonesia’s trademark registration system, under which trademark rights arise upon registration. Initially recognized under Law Number 15 of 2001 concerning Trademarks and reaffirmed by Law Number 20 of 2016 concerning Trademarks and Geographical Indications, the principle aims to ensure legal certainty. However, it is not absolute, as registered trademarks may still be challenged through cancellation, deletion, or legal action where registration or use conflicts with statutory requirements. This study examines the legal construction of the first-to-file principle through two landmark disputes: the IKEA case under Law Number 15 of 2001 and the DENZA trademark dispute between BYD Company Limited and PT Worcas Nusantara Abadi under Law Number 20 of 2016. The study addresses three issues: (1) the legal construction of the first-to-file principle under both laws; (2) legal problems arising from its application, particularly concerning bad-faith registrations and prior users; and (3) dispute resolution mechanisms and legal protection for affected parties. This normative legal research employs statutory, conceptual, and case approaches. The findings show that while the first-to-file principle promotes legal certainty, its application is limited by provisions governing trademark cancellation, deletion for non-use, bad-faith registration, and protection of well-known marks. The IKEA case illustrates that registered trademarks may be deleted for non-use, whereas the DENZA dispute demonstrates continuing challenges involving well-known marks, prior users, alleged bad faith, and procedural issues in trademark litigation.