Trademarks

TRADEMARKS
Availability search; counseling clients on trademark registrability; preparation and prosecution of trademark applications, both in Indonesia and overseas; counseling in trademark selection, maintenance and enforcement, as well as representing clients in disputes resolution through either legal proceedings or negotiations.
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INTRODUCTION

Many changes to the Indonesian Trademark Law have taken place times and again ever since 1992 along with the dynamics of both domestic and international trades.

Following a radical reform with the abandonment of the three-decade long use-based system under the 1961 Law, there came a registration – based system relying on first-to-file principle as introduced by Law No. 19/1992 which was further amended by Law No. 14/1997, taking effect on May 7, 1997.

However, the law did not last long before it managed to operate in full. So as to catch up with international standards of protection required under the TRIPs Agreement, this 1997 law was in the end totally restructured and superseded by Law No. 15/2001, effective as of August 1, 2001.

The present legislation maintains the purely “first-to-file” principle as a prerequisite for establishing trademark rights. It also provides for more relaxed formalities and relatively shorter time frame in the process of trademark prosecution.

Protection to Collective Marks and geographical indications are also available.

TRADEMARK / SERVICE MARK APPLICATIONS

Applications for registration of a Mark can be lodged without evidence of prior use or an intent to use, but must be supported by a formal declaration of entitlement. Chinese characters/Japanese kanji as well as alpha-numeral marks are all registrable now. As for any characters other than the Latin however, both their meaning and transliteration into the Indonesian language system must be included in the application.

Filing Requirements :
1. Power of Attorney (model TMAP-POA enclosed), merely signed and no legalization is necessary.
2. Declaration (model TMAP-DEC enclosed), also merely signed and no legalization is needed).
3. Particulars of the applicant:
– Full name and address;
– Nationality or details of incorporation (be it a corporate body)
4. Details of the Mark + 40 specimens sizing max. 9cm x 9cm, min. 2cm x 2cm, which can be locally made, unless they are presented with colors.
5. Statement of goods or services for which registration is sought. (The goods/services must be individually specified, item per item, as designated under International Classification. No way will a broad statement be acceptable, e.g. “all kinds of goods under Class 9”).
6. Certified copy of basic application (s) and its English translation, if convention priority is claimed

INCOMPLETE FORMALITIES LATE FILING

Falling short of the foregoing filing documents must be completed within two (2) months from the date of notice issued by the Directorate General of Intellectual Property (DGIP), otherwise the application shall be deemed abandoned.

As concerns applications which claim convention priority, there would be nine (9) months period from priority date to submit the certified copy of the priority document, failing which such applications will be treated and prosecuted as an ordinary application.

No filing date could be secured until all the filing formalities are completed.

GROUND FOR REFUSAL

Absolute Grounds (Art. 5):
• Contravening morality or public order or the prevailing laws and regulations;
• Non-distinctiveness;
• Being part of public domain (generic terms);
• Descriptive word(s)

Relative Grounds (Art.6):
• Being confusingly similar to or identical with a prior registered mark of another person in relation to similar goods or services;
• Being confusingly similar to or identical with a well known mark of another person in relation to similar/dissimilar goods or services;
• Bearing or resembling a name or photograph of a public figure or a corporate name of another person, unless with the prior consent in writing from the owner;
• Constituting an imitation of or resembling a name or the abbreviation of such name, flag, insignia or emblem of a state or a national or international institution unless there is a prior consent in writing.

SUBSTANTIVE EXAMINATION

The application shall be examined by DGIP in no later than thirty (30) days from the filing date; and this examination shall be completed within nine (9) months at the latest.

PUBLICATION OPPOSITION

In case that the application is allowed, it shall be published in ten (10) days and such publication shall last for three (3) months for opposition by interested parties.

LENGTH OF TIME IT TAKES TO GET ON REGISTER

The process is supposed to take about thirteen (13) months from the filing date to registration, unless something unforeseen (e.g. opposition) comes up on the way.

DURATION

Once a Mark is registered, it will last for ten (10) years computed retroactively from its filing date. It is renewable for the same term subject to the renewal procedure set out below.

RENEWAL

Applications for renewal may be lodged at any time, provided no earlier than twelve (12) months before the expiry date of the registration. Practically, no evidence of use is to be submitted; it might as well be so required by the Trademark Office though. Nevertheless a formal declaration by the applicant asserting that it or its licensee still uses and will continue to use the Mark remains a statutory requirement for renewal. All documentation required for filing a fresh application as pointed out in the preceding paragraph shall apply, mutatis mutandis, to the filing of renewal applications.

RECORDAL OF TRADEMARK ASSIGNMENT/LICENSE / CHANGE OF NAME OR ADDRESS

No assignment or licensing of an unregistered Mark is recordable in this country. Likewise, no change of name or address for a pending Trademark application can be recorded until the mark has been registered.

USE REQUIREMENT AND “DELETION ACTION”

Commercial use of a Mark after its registration is compulsory, failing which for three (3) consecutive years may end up in expungement of the Mark from the Register for non-use through a so-called “Deletion Action” initiated either by an interested third party before the Commercial Court or by the Trademark office ex-officio.

Use of a registered Mark has to be exactly the same as it is presented in the registration. Such Mark and its registration number with an R sign must be clearly affixed to its packaging (if any) and/or be printed on the catalog, the brochure or instruction manual.

CANCELLATION ACTIONS

The grounds for cancellation actions are just the same as those applying to Opposition proceedings. In cancellation actions there is no question of “nonuse”; it is a question of “similarity”. (Please see the foregoing “Absolute Grounds” and “Relative Grounds”).

CIVIL REMEDIES AND CRIMINAL PENALTIES

It is solely those who have their Marks validly registered in Indonesia are entitled to civil and/or criminal remedies when their rights are infringed.
The civil remedies will include injunctive relief and damages award.
Through criminal proceedings, a maximum 5-year imprisonment and Rp.1.000.000.000,- fine are cumulatively available for counterfeiters.

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