Indonesia: Amendments in Geographical Indications law &Trademark law

October 27, 2016 was the day when the Indonesia Government passed the new law related to both trademarks and Geographical Indications [1] which will replace the Old Trademark Law (Law No. 15 of 2001 on Trademarks) and expected to be enacted soon after the assent from the President. Lots of amendments related to registration, protection and enforcement have been incorporated into the new Geographical Indications and Trademarks law.

The amendments in the new Trademark Law can be categorised as [2]

  • Prosecution— Process
  • Prosecution—Substance
  • Enforcement (Litigation)

Few amendments are yet to become effective and will take a year or so for their effectiveness. Therefore, it is sure that more changes will be visible in future as far as the Trademark law is concerned.

The below detailed description provides you brief details about the changes in the new trademark law:

(a) Prosecution—Process [3]

  • It is now possible to electronically file trademark applications. In other words filing new trademark applications is no longer illegal.
  • There is no need to submit signed copy of Statement of Entitlement forms at the time of filing of trademark application. Upon submission of a trademark application form along with the depiction of the trademark with stipulated fee, the respective trademark will be granted a filing date. However, the previous practise of submitting the mentioned documents is still prevailing.
  • Another amendment in the procedural stage of the prosecution is that the opposition period will now take place before substantive examination. Therefore, once the trademark application has been filed, they will proceed immediately to publication for a two-month opposition period. Previously, the opposition period was three months.

While these amendments were incorporated to fast track the examination & prosecution process, it also enables in increasing number of bad faith applications that are published for opposition and/or registered. Bad faith applications are an ongoing problem in Indonesia and previously, at least some of them were weeded out during the examination stage. Now, with publication taking place first, i.e within 15 working days after the filing date which means that practically every application that is filed will be published. Hence, it is of utmost importance that the whole prosecution (procedural) stage of the trademark application is monitored closely.

(b) Prosecution—Substance [3]

  • According to the new trademark law the definition of what can be included in a trademark has been somewhat expanded. Now, 3-dimensional trademarks marks, sound trademarks and holograms can be accepted for registration and filing in Indonesia.
  • A new amendment has been made in the law i.e. two additional criteria for rejecting a trademark application has been included. These two rejection criteria are (i) misleading or (ii) deceptive elements. Additionally, the new amendment states that a trademark application can be rejected based on an earlier-filed pending application.
  • According to the new law registration of generic trademarks is allowed only if they are combined with some distinctive elements.

(c) Enforcement (Litigation) [4] [5]

  • According to the new trademark law in litigation process a trademark cancellation action can now be performed based on a conflict with a prior geographical indication (GI) and/or traditional knowledge (TK) element.
  • According to the amendment additional provisions have been provided on preliminary injunctions. The target behind for incorporating such provisions in the new law is to increase their use. However, it remains to be seen if this will occur given the requirement, among others, for the plaintiff to pay a bond to the Court equal to the value of the allegedly infringing goods, which would be forfeited if the petition is not successful.
  • The new amendment has nearly doubled the penalties (criminal) for all types of infringement.
  • The new amendment establishes protection for unregistered but famous trademarks by specifically stating that such marks can form the basis of a trademark infringement claim or can be used to cancel a registered mark.

Additionally, applications that originate in Indonesia can only be made once the applicant obtains a trademark registration in Indonesia as the basis of the international trademark registration.

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

[1]http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_1.pdf

[2] “Indonesia: New Trademark Law.” Indonesia: New Trademark Law. IP Coster, 7 Nov. 2016. Web.

[3] “Indonesia’s New Trademark Law – An Overview of the Changes.” Indonesia’s New Trademark Law – An Overview of the Changes | Tilleke&Gibbins.N.p., 11 Jan. 2017. Web.

[4] Redfearn, Nick. “Indonesia’s New Trademark Amendments – a Summary.” Rouse – Indonesia’s New Trademark Amendments – a Summary. Rouse The Magazine, 3 Nov. 2016. Web.

[5] Lovita, Tania. “Indonesia’s New Law on Trade Marks and Geographical Indications.” Rouse – Indonesia’s New Law on Trade Marks and Geographical Indications. Rouse The Magazine, 31 Oct. 2016. Web.

 

 

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