Ownership of Marks
Q: Who may apply for registration?
A: Since the Indonesian Trademark Law adopts the first to file principle, in general any individual, organisation or company can file for a Trademark Registration. However, the Trademark Law also regulates Trademark Registrations that are filed in bad faith. Article 21 paragraph (3) of the Trademark Law stipulates that an application is refused if it is submitted by an applicant in bad faith. While the implementation of this article during substantive examination holds true for some applications that have similarities with the already established and Well-known Marks, in practice it is quite challenging to determine whether an application is filed in bad faith or not. A bad-faith application that later matured to registration can always be invalidated at the Court of Commerce as regulated under article 77 paragraph (2) of the Trademark Law, which stipulates the following:
“The lawsuit for invalidation may be in unlimited time if there is bad faith and/or the relevant Mark contravenes the State ideology, laws and regulations, morality, religions, decency, and public order.”
Scope of Trademark
Q: What may and may not be protected and registered as a Trademark?
A: By definition of article 1 of the Trademark Law, a Mark is any sign capable of being represented graphically in the form of drawings, logos, names, words, letters, numerals, colour arrangement, in two and;or three-dimensional shape, sounds, holograms or combination of two or more of those elements to distinguish goods or services produced by a person or legal entity in trading goods or services.
Given the definition above, then the Law acknowledges two types of trademarks, namely traditional and non-traditional marks.
Unregistered Trademarks
Q: Can Trademark Rights be established without registration?
A: Indonesia is a jurisdiction that adopts the first to file principle. Hence, a prior use itself is not sufficient to establish rights in the country.
Famous Foreign Trademarks
Q: Is a famous foreign Trademark afforded protection even if not used domestically? If so, must the foreign Trademark be famous domestically? What proof is required? What protection is provided?
A: A Trademark can only be protected if it is registered in Indonesia, regardless of its fame. However, the Indonesian Trademark Law has a mechanism to somewhat protect a famous foreign Trademark from bad faith registrations by other parties. Should another party try to file a malicious Trademark application that is identical or similar to a famous foreign Trademark, such application will be rejected on the basis of article 21 paragraph (1) b and c, which stipulates the following:
“An Application is refused if the Mark is substantively similar to or identical with a well-known Mark of other parties for similar goods and/or services OR a well-known Mark of other parties for different goods and/or services complying with certain requirements.”
The issue is then shifted to what constitutes as a famous Trademark. Article 18 of the Ministry of Law and Human Rights of the Republic of Indonesia Regulation No. 67 2016 concerning Trademark Registration Decree of the Directorate General of Intellectual Property in the Field of Trademarks has set out the criteria of what makes a Trademark famous, such as:
- the level of knowledge or public recognition against the Mark in the business field that concerned as a well-known mark;
- the volume of sales of goods and/or services and benefits derived from using the Mark by the owner;
- the market share controlled by the Mark in relation to the circulation of goods and/or services in the community;
- the area of use of the Mark;
- the period of use of the Mark;
- the intensity and promotion of the Mark, including value of investment used for the promotion;
- the number of Trademark applications and registration around the world;
- the success rate of law enforcement, in particular regarding the recognition of the Mark as a well-known Mark by an authorised institution; or
- the valuation of the Mark because of the reputation and quality assurance of goods and/or services protected by the Mark.
However, a well-known mark that is famous abroad does not always necessarily have the same level of fame in Indonesia. This raises the issue as to whether the Trademark owner should also establish its fame in Indonesia before taking any action against other parties.
The Benefits of Registration
Q: What are the benefits of registration?
A: Pursuant to the Trademark Law, the right on a Mark means the Exclusive Right granted by the state to a registered Mark Owner for a definite period to use his or her mark or authorise others to do otherwise. Hence, by registering a Trademark in Indonesia, the owner can establish its legal right should there is an infringement by another party. This includes, but is not limited to, requesting an e-commerce listing takedown notice, sending a cease and desist letter, filing a police report for the criminal aspect of the infringement, seeking damages at the Court of Commerce, issuing licensing rights, filing injunctions and conducting a Customs Recordal before Indonesian Customs.
Filing Procedure and Documentation
Q: What documentation is needed to file a Trademark Application? What rules govern the representation of the Mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
A: A Trademark search is strongly suggested for anyone who wishes to file a Trademark Application in Indonesia. The search report will identify potential hazards and tumbling blocks to an otherwise successful registration process. Assuming the search report gives the all-clear for continuing the application process, the applicant shall prepare the following:
- name of the applicant;
- address;
- list of goods and services; and
- the representation of the Mark to be filed, which can be in a form of wordmark, logo or non-traditional Marks.
Once the above information has been provided, then we will prepare the following documents to be signed by the client:
- power of attorney; and
- statement of Mark ownership.
Please be mindful that since 2015, e-filing is the only method of acceptable filing in Indonesia.
Registration Time Frame and Cost
Q: How long does it typically take, and how much does it typically cost to obtain a Trademark Registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a Trademark Application and receiving a registration?
A: Assuming the application does not receive any opposition and provisional refusal, then it may only take 14 to 16 months from filing to obtaining a registration number. This time estimate is significantly faster than it used to be five years ago when even a straightforward registration would take two to three years.
Classification System
Q: What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
A: Indonesia adopts the NICE classification system with a few twists to adapt to certain local goods or services that are not available in other countries. Multi-class applications are available but we generally advise our clients to file single-class applications instead. There is a reason for this – if one of the classes in a multi-class application receives an office action, then it will also impact other classes that will otherwise proceed to registration in a much faster manner if they are filed as single-class applications.
In general, all applicants should refer to the Madrid Goods and Dervices Manager for the list of acceptable items in Indonesia. The classification system in Indonesia is very rigid – if the item is unavailable in the e-filing system, then it cannot be filed.
Examination Procedure
Q: What procedure does the Trademark Office follow when determining whether to grant a registration? Are applications examined for potential coflicts with other Trademarks? Are letters of consent accepted to overcome an objection based on a third-party Mark? May applicants respond to rejections by the Trademark Office?
A: While there is no official Trademark Examination guideline issued to the public, it is understood that a Trademark Examination is mainly based on three very important articles in the Trademark Law, namely articles 20, 21 and 22. Article 20 focuses on inherent distinctiveness, article 21 focuses on conflicts with other prior Marks and Famous Marks, whereas article 22 focuses on the inclusion of a generic name with additional wording to the extent that it contains distinctive elements.
Any opposition or rebuttal during the publication stage will be considered during the substantive examination. If there is no opposition within a period of not more than 30 working days from the expiration date of publication, substantive examination will be carried out on the application. In theory, an examination shall be completed within 150 working days. However, in practice, it may take longer. In the event the Examiner decides to register the application, then a registration number will be issued.
If the Applicant receives a provisional refusal, then the Trademark Law provides a deadline of 30 working days from the date of receipt of the letter of provisional refusal to respond. If the response is still rejected, then a final rejection letter will be issued.
Letters of consent do not work all the time – such acceptance will depend on the discretion of the Examiner.
Use of a Trademark and Registration
Q: Does use of a Trademark or Service Mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
A: Since Indonesia adopts the first to file principle, a prior use does not need to be claimed before registration. The evidence of use does not have to be submitted.
If the applicant has filed another application earlier in other countries, the applicant has six months from the priority date to claim for a priority in Indonesia.
Concerning non-use, by law a Trademark may be cancelled at the Court of Commerce if a Registered Mark has not been used for three consecutive years from the date of registration or from the date of last use. However, the law does not stipulate the minimum threshold of use – hence in general any non-use cancellation is very challenging.
Markings
Q: What words or symbols can be used to indicate Trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
A: The Indonesian Trademark Law does not regulate the use of markings. However, no one may mislead the public by indicating the Trademark has been registered if in fact it has not.
Appealing a Denied Application
Q: Is there an appeal process if the application is denied?
A: The Trademark Law allows the applicant to file for a response should its application receives a provisional refusal and final refusal. Once an application receives a final refusal, the applicant can file an appeal to the Trademark Board of Appeal within 90 working days from the date of the notification has been received.
The Board shall issue the decision to refuse or accept the appeal within three months from the date when the appeal is lodged in. However, in practice it takes longer than three months.
If the Board of Appeal rejects the appeal, then the applicant or petitioner can file a further appeal to the Court of Commerce, but no later than three months from the date of receipt of the decision from the Board of Appeal.
Third-Party Opposition
Q: Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a Trademark or Service Mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
A: Applications are published for two months only. During the publication period, any interested party may file for oppositions and they will be considered during the substantive examination stage. Once the publication period has lapsed, there is no formal means of filing for opposition, including by extension requests.
To have a successful opposition proceeding, it is strongly recommended that the opposer has valid legal standing, namely an earlier application or registration in Indonesia. Otherwise, it is likely that the Examiner will reject the opposition by citing the first to file principle.
Invalidations and cancellations initiated by any third party are only feasible once the Trademarks to be invalidated or cancelled have been registered. Both of them have to be filed at the Court of Commerce.
Duration and Maintenance of Registration
Q: How long does a registration remain in effect and what is required to maintain a registration? Is use of the Trademark required for its maintenance? If so, what proof of use is required?
A: A registration remains in force for 10 years and the protection commences from the filing date. The registration can be renewed every 10 years and the renewal can be filed within six months before the due date, or up to six months after the due date with additional official fees.
While proving the actual use is not required to renew a registration, a statement of use of the Mark will have to be signed by the Trademark Owner.
Surrender
Q: What is the procedure for surrendering a Trademark Registration?
A: There are two common methods of surrendering a Trademark that also depends on the circumstances. If the application or registration is to be simply abandoned by its owner, the owner can proactively withdraw it by requesting the notice of withdrawal to the Directorate General of Intellectual Property. Another way of surrendering an application or registration is by assigning it to another party.
Related IP Rights
Q: Can Trademarks be protected under other IP Rights?
A: There is no overlapping right between Trademarks with Copyrights and Industrial Designs.
Trademarks Online and Domain Names
Q: What regime governs the protection of Trademarks Online and Domain Names?
A: The Trademark Law also regulates the protection of Trademarks Online. However, Domain Names are more specifically regulated under Law No. 11 of 2008 concerning Information and Electronic Transactions as amended by Law No. 19 Y2016 (the Information and Electronic Transactions Law). Domain Names apply the same ‘first to file’ principle – this is stated in the explanation of article 23 paragraph (1) of the Information and Electronic Transactions Law, namely Domain Names in the form of addresses or identities of state administrators, people, business entities or the public, the acquisition of which is based on the principle of the first registrar (first come first serve). This is what will later lead to many disputes, because the weakness of the principle of the first registrant on this Domain Name lies with a registrar who does not check competently on the registrar.
Should you need more information regarding registration and use of Trademark in Indonesia, please do not hesitate to contact us via [email protected].
