It has long been known that Indonesia would eventually revise its current Trademark Act, which has been in force since 2001. A simple yet incomplete document, the Act became dated almost immediately after it was enacted, with many of the promised corresponding regulations having never been issued.
Indeed, the main questions have always been when a revised Act would finally be enacted and what exactly would be changed.
A civil law country with a strong reluctance to tamper with existing laws, Indonesia has often moved slowly when considering revisions to legislation. Coupled with the current House of Represenative’s less-than-robust record at pushing through legislation (only 7 bills were passed in 2013), it would seem that a revised Trademark Act is still far off.
Yet by all accounts, including its own, the Indonesian Trademark Office is preparing for a revised Trademark Act to be enacted sometime within the next two years. That timeframe is no coincidence.
Due to its membership in the Association of Southeast Asean Nations (ASEAN) and the group’s commitment to establishing the ASEAN Economic Community 2015, Indonesia is obligated to join the Madrid Protocol by December 2015. And it appears that the government is taking the opportunity to revise the Indonesian Trademark Act both procedurally and substantively.
While the final version of the revised Act is still up in the air and must be approved by the House of Represenatives, a number of amendments seem very likely to be included in any final version. These amendments can be divided into two groups: procedural changes and substantive changes.
Proposed Procudural Changes:
The following reviews three proposed procedural changes that would affect trademark administration in Indonesia.
The first proposed change would alter the sequence and timing of the trademark registration process at the Indonesian Trademark Office. The revised Act would shorten the alloted time from filing to grant from 14 months, 10 days to 11 months. This would be largely symbolic as it is taking at present approximately 18-24 months for applications to complete the registration process, despite the current provisions.
However, a key part of that shortening is focused on altering the sequence of application prosecution so that the 3-month opposition period occurs before the substantive examination stage. This way, if an opposition is filed against the registration of a mark, the examiner can review the opposition while simultaneously conducting the substantive examination. Currently, the substantive examination occurs before publication for opposition, which can result in the substantive examination essentially being conducted twice (or three times if there is also an objection to the rejection of an application).
The second proposed change would affect the administration of trademark renewals. Currently, renewals can only be filed during the 12 months immedately before the registration’s expiry date with no grace period available. The proposed revisions would shorten the initial renewal period to only within 6 months of the registration’s expiry date but add a 6-month grace period immediately following that date. For many trademark owners, this would be a welcome change.
The final proposed procedural change is perhaps the one with the biggest potential to impact how trademarks are filed in Indonesia: accession to the Madrid Protocol. Joining the Madrid system would require a major overhaul of both the current Indonesian Trademark Act and the Indonesian Trademark Office to accommodate the electronic filing of applications overseas, in English, for registration in Indonesia. While significant hurdles remain, officials from the Trademark Office have become increasingly clear that they are planning for Madrid accession to happen sooner, rather than later.
Proposed Substantive Changes:
There are also a number of proposed substantive changes that, if ultimately enacted, would significantly improve the legal framework of trademark law in Indonesia.
First, the revised act proposes to expand the definition of a “trademark” to include 3-dimensional marks, sound marks, smell marks, and holograms or combinations thereof. Currently, such non-traditional marks are not protected under Indonesian trademark law. This revision would facilitate Indonesia’s stated intention to ratify the Singapore Treaty on the Law of Trademarks.
The second proposed revision would be to add detailed provisions regarding preliminary injunctions for infringing goods and/or activities. While preliminary injunctons are theoretically available under the current Act, the corresponding regulations have never been issued, thus leaving this provision all but unenforceable. The Indonesian Supreme Court attempted to fill this gap with Regulation Number 5 of 2012, but its wording has proven to be overly vague to be of much use. The proposed provisions would detail the requirements, steps and procedure for requesting the imposition of a preliminary injunction from the Commercial Court. The lack of any available injunctive relief has long troubled trademark owners, so these proposed revisions, if enacted, would be most welcome.
Third, the revised Act proposes to increase the monetary fines for infringing activity. Most interestingly, the revised Act would, for the first time, include a criminal provision specifically focused on infringing use of trademarks on goods that threaten the health and/or safety of the public and the environment.
Revising the current Indonesian Trademark Act has been discussed for a long time. And yet, there now appears to be an actual effort underway to finally enact these revisions. While it is possible—maybe even likely—that more changes will be proposed and/or made to the Act before it is finalized, the proposed changes discussed above are those that appear most likely to be included in any final version.
Either way, trademark owners and practitioners should monitor this matter closely as it will undoubtedly change the way trademarks are registered, renewed and protected in Indonesia.