The Indonesian Supreme Court has upheld the decision of the Commercial Court at the Central Jakarta District Court regarding the invalidation of the recordation of a trademark assignment after finding that the purported assignment agreement had been executed several years after the original trademark owner had passed away.
The dispute involved the “BB BAKERY” trademarks registered in Classes 30 and 35, which were originally owned by the late Bujung Benjamin. The plaintiff, Rita Benyamin, the wife and one of the lawful heirs of Bujung Benjamin, challenged the validity of a trademark assignment agreement dated September 16, 2021, which purportedly assigned the trademarks to PT Bintang Bersinar Lestari after the death of Bujung Benjamin, who passed away on January 24, 2017.
The plaintiff argued that the assignment document contained false statements, fictitious circumstances, or forged signatures, and that she had never consented to the assignment. The assignment had nevertheless been recorded with the Directorate General of Intellectual Property (“DGIP”).
Court’s Findings
Relying on death certificates and consular documents, the Court found it impossible for the deceased trademark owner to have signed the assignment agreement in 2021. The Court held that this constituted a false circumstance or misrepresentation that invalidated the agreement under Article 1320 of the Indonesian Civil Code, which governs the validity requirements for contracts.
Importantly, the Court also confirmed that upon the death of the trademark owner, the trademark rights automatically formed part of the inheritance estate and assigned collectively to all lawful heirs. The Court rejected arguments that a statement from one heir regarding the bakery business was sufficient to assign the trademarks, emphasizing that the assignment of inherited trademark rights required a proper agreement among all heirs.
The Commercial Court declared the trademark assignment agreement null and void, invalidated the recordation of the assignment with the DGIP, and ordered the removal of the assignment record from the trademark register. The Court also confirmed that, upon the passing of Bujung Benjamin, the lawful owners of the trademarks became the five heirs of the late Bujung Benjamin.
At the judicial review stage, the Supreme Court rejected the application filed by PT Bintang Bersinar Lestari, including the new evidence submitted by the company, on the basis that the evidence was not decisive.
Significance of the Decision
The decision confirms that intellectual property rights form part of a deceased person’s estate and pass automatically to lawful heirs upon death. It also underscores the importance of ensuring that trademark assignments and supporting documents are properly executed and supported by valid authority.
The decision also demonstrates the willingness of Indonesian courts to scrutinize the factual basis of IP assignments and to invalidate assignment involving false statements or improper documentation, even where the assignment has already been recorded with the DGIP.
For trademark owners, businesses and heirs, the case serves as a reminder of the importance of proper succession planning and careful management of intellectual property assets following the death of a rights holder.
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For further information, please contact:
Rusmaini Lenggogeni, Partner, SSEK
rusmainilenggogeni@ssek.com
