In the Trademark registration process in Indonesia, the issuance of a “Provisional Refusal” does not necessarily mark the end of the road. However, many applicants mistakenly assume that every response has an equal chance of overturning the examiner’s decision. In reality, not all responses are treated the same, and not all will be accepted.
This article discusses how examiners assess responses to a provisional refusal, the types of responses recognized under the examination guidelines, and when a response is effective—and when it is ultimately futile.
How Examiners Assess an Applicant’s Response
Under the Substantive Examination Guidelines, an applicant’s response is not reviewed merely as a matter of formality. The examiner will:
- Re-examine the basis of the provisional refusal;
- Review the type of response submitted;
- Assess whether the response, from a legal and factual standpoint, adequately addresses the grounds for refusal; and
- Render a final decision: to accept the application, reject it, or uphold the refusal.
In other words, the examination of a response is a substantive evaluation, not a simple administrative confirmation.
Types of Responses to a Provisional Refusal
Based on the examination guidelines, there are several forms of responses commonly submitted by applicants. However, their effectiveness largely depends on the nature of the refusal being faced.
- Agreement with the Provisional Refusal
This is the simplest form of response, yet often the most rational. When is it effective?- Where the refusal is based on clear absolute grounds (e.g., contrary to morality, misleading, or constituting a common sign); or
- Where the mark clearly lacks distinctiveness and cannot realistically be remedied through argumentation.
When is it a wise option?
When proceeding further would only increase costs and time without any realistic prospect of success.
- Amendment or Formal Changes
Amendments may include:- Clarification of the mark description;
- Adjustment of the list of goods and/or services; or
- Correction of administrative errors.
When is it effective?
- If the refusal is formal or administrative in nature; or
- If the examiner expressly requests limited clarification or correction.
- Arguments or Written Rebuttals to the Provisional Refusal
This is the most frequently submitted type of response, and also the one that most often fails if not prepared properly. When is it effective?- When the arguments directly address the legal grounds of the refusal;
- When supported by visual, phonetic, and/or conceptual analysis;
- When able to demonstrate genuine differences in the relevant goods and/or services; and
- When supported by relevant jurisprudence that can be relied upon as precedent.
- Letter of Consent (Statement of No Objection)
This type of letter is often misunderstood as a “shortcut,” even though some examiners may occasionally accept it.When is it effective?
- In certain cases involving relative grounds of refusal;
- Where it does not give rise to public confusion;
- Where the mark is still considered sufficiently distinctive; and
- Where there is a business relationship between the applicant and the owner of the cited mark (e.g., parent and subsidiary companies).
- Request for Extension of Time
A request for extension may be submitted, but it is limited in nature and not always granted.When is it effective?
- Where the applicant genuinely requires additional time to prepare supporting documents; or
- Where there are relevant parallel proceedings underway.
When Is a Response Effective, and When Is It a Strategic Choice to Refrain?
| Grounds for Refusal | Effective Response |
| Absolute Grounds | Agreement with the Refusal |
| Formal Deficiencies | Amendment (Making Corrections) |
| Limited (Partial) Similarity | Measured Legal Argumentation |
| Strong Similarity | Letter of Consent, but often unsuccessful |
| Common / Descriptive Signs | Arguments are almost always futile |
A response to a provisional refusal is not merely a procedural obligation, but a strategic decision. Submitting an inappropriate response not only fails to change the outcome, but also consumes time and resources without adding value.
In practice, success is not determined by the length of the response, but by the quality of the arguments, the clarity and accuracy of the legal basis, and the relevance of the supporting evidence presented.
Should you require further information on how to respond to a Trademark provisional refusal in Indonesia or abroad, please contact us through the following channels and receive a FREE 15-minute consultation:
📩 E-Mail : [email protected]
📞 Book a Call : +62 21 83793812
💬 WhatsApp : +62 812 87000 889
About AFFA:
Established in 1999, AFFA Intellectual Property Rights is an Indonesia-based boutique IP law firm serving international brands and innovators, offering full-service support—from prosecution and licensing to enforcement and commercialization—in Indonesia’s dynamic IP landscape. Our firm is widely recognized for its excellence, with accolades including “Best Boutique Law Firm in Indonesia” and “IP Enforcement Firm” at the Indonesia Law Firm Awards 2025 by Asia Business Law Journal, as well as being listed as a “Recommended Firm 2024 — Indonesia” by WTR 1000: The World’s Leading Trademark Professionals. For more information, please visit: www.affa.co.id.
