Trademark Renewal in Indonesia - AFFA IPR

Trademark Renewal in Indonesia

Intellectual Property, Trademark

In Indonesia, the procedure for renewing a Trademark is governed by Law No. 20 of 2016 on Trademarks and Geographical Indications (“Trademark Law”). According to this regulation, a registered Trademark is valid for 10 years from the filing date and may be renewed within 6 months prior to its expiration date, and up to 6 months after the expiration date (under the grace period mechanism) with additional official fees.   Before the enactment of the current Trademark Law, failure to renew a Trademark on time meant automatic removal from the register, with no recovery route other than refiling a brand-new application. Fortunately, under the current regime, the system is more forgiving—albeit with additional cost implications. As in many areas of Intellectual Property, timeliness is essential, and renewal deadlines should be treated with the same gravity as initial filing deadlines.   What Happens If the Deadline Is Missed?   Missing the renewal deadline does not immediately result in loss of rights. Under the Trademark Law, owners are granted a 6-month grace period after the expiry date in which they may still renew their Trademark. However, this comes at a cost: the official fees are approximately doubled.   It is important to note that once the grace period lapses, renewal is no longer possible, and the Trademark will be removed from the register. The only available option at that point is to file a new Trademark application—a route that may come with increased risks, especially if similar marks have been filed in the interim.   When Can a Trademark Be Renewed?   A Trademark renewal may be filed as early as 6 months prior to the expiration date. To renew a registered Trademark in Indonesia, the following documents are required:   Statement of Use of Mark While a declaration of use is mandatory, no physical evidence of use is required to be submitted to the Directorate General of Intellectual Property (DGIP).  Power of Attorney Foreign Trademark owners must appoint a local agent or legal representative. A signed Power of Attorney is required for the renewal process.   Timeline Once the renewal application is submitted, the DGIP will issue a renewal receipt. Thanks to the digitization of the system, the renewal certificate or confirmation notice is generally issued within a day, making the process swift and efficient compared to earlier practices.   Should you need more information about the Trademark Renewal in Indonesia, feel free to contact us at [email protected].

Blindboxes, Resellers, and IP: When Does Selling Cross the Line? - AFFA IPR

Blindboxes, Resellers, and IP: When Does Selling Cross the Line?

Intellectual Property, Trademark

Action figure communities in Indonesia have recently been shaken by a wave of takedowns on popular products across e-commerce platforms. Not only unofficial sellers like casual collectors were affected, but even official resellers who had followed the “white list” registration procedures were hit. The trigger? An official notice from the Trademark Holder (a licensed distributor of the Trademark Owner) prohibits various uses of the brand name and logo and the sale of unboxed items.   This incident raises an important question among many collectors and business owners: Can Intellectual Property (IP) Holders arbitrarily ban secondhand sales? Is this legal?   The Exclusive Rights of Trademark Holders   Legally, a Trademark Holder has the exclusive right to control how their mark/name/logo is used, especially in marketing and product distribution. However, it’s important to note:   IP law does not automatically prohibit the resale of secondhand products, as long as the items are genuine and were lawfully acquired. Under a principle known as the “exhaustion doctrine”, the rights of a Trademark Holder are considered “exhausted” once the product is sold lawfully for the first time. This means the buyer may resell it. However, the Trademark Holder does retain the right to restrict the use of their brand in contexts such as store branding, product repackaging, or unauthorized logo usage that may mislead consumers or harm brand image.   In short, banning the resale of secondhand goods just because they are used can be legally disputed. But banning the unauthorized commercial use of logos, names, and other brand elements is legally valid.   Safe Tips for Selling Secondhand Items Without Violating IP Rights   To avoid infringing a brand’s rights when selling collectibles or secondhand products, here are some best practices:   Avoid using the brand name or logo in your store title. Use neutral descriptions like “blindbox collectible” or “random rare figure.” Clarify that the product is from a personal collection and is pre-owned. This can help show there’s no intention to violate distribution rights. Do not modify or rebrand the product. Repackaging or adding custom branding (like stickers) can be considered infringement. Avoid implying that you’re an official distributor. If you’re not part of the authorized distribution channel, avoid using terms like “official” or “authorized.” Do not sell opened blindbox items if the Trademark Holder prohibits it. If a product is meant to be a surprise item, unboxing and selling it by character name can be considered a violation of its commercial value.   But Why Can People Freely Sell Used iPhones?   This comparison has sparked debate. After all, people sell secondhand iPhones on online platforms all the time without issue. What’s the difference?   Apple and other phone manufacturers do not prohibit the sale of secondhand devices as long as they are genuine and unmodified. iPhones are not designed as “surprise” collectibles like blindboxes, so there’s no concern about damaged exclusivity due to unboxing. Sellers of secondhand iPhones also do not claim to be official distributors and don’t use Apple’s logo for store branding.   In essence, the issue is not the fact that the item is secondhand, but the context of branding and marketing.   Selling secondhand goods is legally allowed, as long as the products are genuine and the seller does not mislead consumers by misusing brand elements. For collectors and small sellers, understanding the limits of IP law is key to keeping your listings safe from takedowns or legal claims.   Should you need expert advice on Trademark usage in online sales, contact us at [email protected].

Trademark Registration Procedure in Bali - AFFA IPR

Trademark Registration Procedure in Bali

Intellectual Property, Trademark1 Comment

Registering a Trademark in Bali, Indonesia, is an essential step for any foreign business looking to enter or expand within the island’s vibrant market. As one of Southeast Asia’s most renowned tourism destinations and a hub for creative industries, Bali offers significant commercial opportunities, particularly in sectors like hospitality, food and beverage, fashion, and handicrafts. However, brand protection can be challenging due to intense competition and frequent cases of infringement in the region. Trademark protection in Bali is governed under Indonesia’s national regulations, primarily Law No. 20 of 2016 on Marks and Geographical Indications, as amended by Law No. 11 of 2020 on Job Creation and Law No. 6 of 2023. Supporting regulations include Government Regulation No. 28 of 2019 (official fees), Government Regulation No. 22 of 2018 (Madrid Protocol implementation), Government Regulation No. 90 of 2019 (Trademark Appeal Commission), and Ministry Regulation No. 67 of 2016 (as amended by Regulation No. 12 of 2021) on Trademark Registration Procedures.   Types of Marks That Can Be Registered in Bali   You can register: Word mark Figurative mark Combination mark Three-dimensional mark Sound mark Hologram   Bali adheres to the first-to-file principle, so early registration is strongly encouraged. Prior use is not considered a strong, bona fide basis of protection in Bali.   Types of Marks That Cannot Be Registered   The following cannot be registered: If the Mark is contrary to public order or morality If the Mark misleads consumers about the nature, quality, or origin of goods/services Generic or descriptive terms without distinctiveness Identical or similar marks already registered for similar goods/services National flags, emblems, or state symbols For 3D Mark, it cannot be of functional feature.   Requirements to Register a Trademark   Foreign businesses must appoint a local registered IP/Trademark Consultant to file on their behalf.   Documents needed: Power of attorney – simply signed Statement of Mark Ownership – simply signed Specimen of Mark to be filed Details of goods/services and relevant class(es) Applicant’s data (name and address)   If claiming priority from a foreign application, the priority document must also be submitted.   Trademark Registration Procedure in Bali   Please note that it may take approximately 10-14 months from filing to the issuance of Trademark certificate. The stages are as follows: Filing Formality Examination (15 days) Publication (2 months) Examination Issuance of registration number Issuance of TM Certificate (Digital Certificate only)   Post-Registration: What to Do and Remember   Once your Trademark is registered: Use your mark within 5 years to avoid any non-use cancellation action filed by any 3rd party. Monitor and enforce your rights through warning letters or legal action. Renewal is due every 10 years and can be filed within 6 months before the expiration date (or during a 6-month grace period with a penalty). Record any change of ownership or license agreements with the DGIP.   Should you need further information regarding Trademark registration and protection strategies in Bali, feel free to contact us at [email protected].

Safeguarding Patent Rights Amid Implementation Challenges in Indonesia – Understanding Article 90 of the Patent Law - AFFA IPR

Safeguarding Patent Rights Amid Implementation Challenges in Indonesia – Understanding Article 90 of the Patent Law

Patent, Intellectual Property

In the landscape of Intellectual Property protection, Indonesia’s Patent Law sets a clear framework to ensure that Patents are registered and implemented for the nation’s benefit. Article 20 and its companion Article 20A of the Patent Law impose a fundamental obligation on Patent Holders: to commercially implement their Patents within Indonesian territory and report such implementation annually to the Minister.   However, recognizing the complex realities of bringing certain patented technologies to market, Article 90 introduces a crucial safeguard — a mechanism that allows flexibility in the face of genuine implementation delays. This provision is pivotal in balancing national interests with the practical constraints that Patent Holders may face.   Key Provisions of Article 90   Article 90 provides that: Discretion to Delay or Deny Compulsory Licenses: The Minister has the authority to delay or reject a request for a compulsory license if, based on recommendations from a team of experts and the Patent Holder’s explanation, it is established that the Patent in question reasonably requires more than 36 months to be commercially implemented in Indonesia. Requirement of Supporting Evidence: The Patent Holder must submit a formal statement supported by evidence demonstrating that the 36-month period is insufficient for commercial implementation. This evidence may include technical, financial, regulatory, or market-related obstacles that have prevented timely execution.   Relationship with Article 20 and 20A   Article 20 of the Patent Law mandates that every Patent must be implemented in Indonesia, while Article 20A requires Patent Holders to submit an annual declaration to the Minister detailing such implementation. These articles are designed to prevent the warehousing of Patents and ensure that patented inventions contribute to domestic innovation, manufacturing, and economic development.   Yet, strict enforcement of these provisions without flexibility could unjustly penalize inventors and companies that face legitimate delays. This is where Article 90 becomes essential: it prevents automatic penalties, such as the granting of compulsory licenses or potential cancellation of the Patent, by recognizing that not all Patents can be commercially viable within the same timeframe.   Practical Implications   Article 90 ensures that: ⁠Inventors are protected from losing control of their Patents due to delays beyond their control. ⁠Authorities are guided by expert input and factual evidence rather than rigid timelines. ⁠A balance is maintained between incentivizing local use of patents and acknowledging the real-world complexities of innovation, particularly in high-tech or heavily regulated industries.   Article 90 of the Indonesian Patent Law serves as a vital antidote to the potential rigidity of Articles 20 and 20A. It embodies a pragmatic approach to Patent enforcement by introducing flexibility and fairness into the system. For Patent Holders, especially those managing complex innovations, this article provides a necessary legal avenue to protect their rights while working towards the eventual implementation of their patents in Indonesia. Should you need more information about Indonesian Patent Law and maintaining your Patent in Indonesia, you can contact us through email [email protected].