Licenses
Q: May a licence be recorded against a Mark in Indonesia? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?
A: A registered Mark can be licensed out to other parties in Indonesia. For the agreement to have binding legal effect against any third party, it will have to be recorded at the Directorate General of Intellectual Property (DGIP). In general, a licence agreement should cover the details of the licensor and the licensee, the nature of licensing (exclusive or non-exclusive), the ability to sub-license (or not), term of the licence agreement, rights and responsibilities of the parties, and the object or Trademark to be licensed.
The licensing agreement must not contain provisions that either directly or indirectly damage the Indonesian economy or limitation obstructing Indonesian capacity to acquire and develop technology.
Assignment
Q: What can be assigned? Does the Trademark have to be registered first?
A: A Trademark application or registration can be assigned to another party, provided that the deed of assignment, which has been notarised, is recorded at the DGIP to be fully binding. The assignment shall cover all goods or services covered by the assigned mark. The other business assets are not generally required to be assigned to make the Trademark assignment valid, except if both parties agree otherwise.
Assignment Documentation
Q: What documents are required for assignment and what form must they take? What procedures apply?
A: Both parties shall sign a deed of assignment that later will be notarised and submitted to the DGIP. A power of attorney will also need to be provided.
Validity Assignment
Q: Must the assignment be recorded for purposes of its validity?
A: A signed deed of agreement must be recorded before the DGIP to be valid.
Security Interests
Q: Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
A: In theory, all kinds of IP rights can be used as security interests. But in practice, the recordal of security interests is not possible for the time being.
Should you need more information regarding the Licensing & Assignment of Trademark in Indonesia, please do not hesitate to contact us via [email protected].
