Matters relating to trademarks in Indonesia are governed by Law No 15 of 2001 regarding Marks (Trademark Law), and its implementing regulations. Pursuant to the Trademark Law, a 'Mark' is defined as a sign in the form of a picture, name, word, letter, figures, colour configuration, or combination of the said elements having distinguishing features and used in trading activities of goods and services. The term 'Marks' covers trademarks and service marks.
How to register a Mark in Indonesia?
In principle, a mark may be accepted as a registerable trademark provided it meets the general criteria applicable to the definition of trademarks noted above and is (i) not in conflict with prevailing laws, standards of religion, morality, decency or public order; (ii) has not become commonly used in the public domain and (iii) does not constitute a mere description of the goods or services.
There are also a number of grounds for rejection of a trademark registration application under the Trademark Law, including if the mark:
- is principally the same as an existing registered trademark, or a mark already in popular use in respect of goods and/or services of the same kind belonging to other parties;
- is principally the same as a geographical location;
- is or closely resembles the names of popular figures or photos or names of statutory bodies owned by other parties, unless otherwise based on the written approval of the rightful party;
- is an imitation of or closely resembles names or acronyms of names, flags, signs or symbols or emblems of countries or national and international institutions, unless otherwise based on the written approval of the rightful and duly authorised party; or
- is an imitation or closely resembles signs or seals or official stamps used by countries or government institutions, unless otherwise based on the written approval of the rightful and duly authorised party.
To register a mark, an application must be submitted to the Directorate General of Intellectual Property Rights under the Ministry of Law and Human Rights (DG IPR). Note that application for the registration of a trademark may be made on the basis of priority rights if the applicant originates from a country participating in either the Paris Convention for the Protection of Industrial Property, or the Agreement Establishing the World Trade Organisation. As these agreements are applied in Indonesia, the owner of a trademark which is registered in a participating country may obtain acknowledgment that the date of original registration is the date of registration in Indonesia, provided that the application for acknowledgment of priority rights is submitted in Indonesia within 6 months of the date of registration in the originating country. Therefore, if a party has recently registered the trademark in question in another participating jurisdiction this may be used to support the application for registration of such trademark in Indonesia.
What is the timeframe for the Mark registration?
The registration procedure includes formality examination, substantive review and announcement. The formality examination is the examination performed for examining the documents submitted by the application and it may take no longer than 30 days. A substantive review is the review performed for examining the marks to be registered and it may take time for a maximum 9 months. Following the completion of the substantive review, the mark will be announced for the period of 3 months before the Directorate General issues a certificate of mark registration which is valid for 10 years as from the date of receipt of mark registration application. The mark registration certificate is extendable.
How to handle the rejection of application?
There are in general two reasons for the rejection of application by DG IPR following its submission namely: it is due to the decision of the DG IPR based on its substantive review or it is due to a claim from a third party. If the objection from the DG IPR is based on a claim by a third party, the applicant has the right to submit a rebuttal to the DG IPR. The DG IPR must then re-examine the application in consideration of the rebuttal submitted by the applicant. If the rebuttal is rejected, the applicant may appeal the rejection to the Trademark Appeal Commission. If the objection from the DG IPR is not based on a claim by a third party, but on the consideration given by the DG IPR, the applicant may appeal the rejection directly to the Trademark Appeal Commission.
The request for appeal must be submitted to the Trademark Appeal Commission no later than three months from the date of the notification letter of the rejection of the trademark registration. If the Trademark Appeal Commission rejects the appeal, the applicant may then bring a case in the commercial courts. Again, there is a deadline for submitting the claim, and the claim to the commercial court must be submitted no later than three months from the date of the notification letter of the rejection of the appeal.