Indonesia became the 100th signatory of the Madrid Protocol on October 2, 2017, Madrid Protocol, makes the filling and registration of trademarks on an international level very convenient, Indonesian Trademark law, apart from protecting traditional marks also grants protection to non-conventional marks like holograms, 3-D marks, and sound marks. “It is obligatory to use the Indonesian language for trademarks held by Indonesian persons or businesses, with an exemption for foreign licensed trademarks,” states a new Presidential Regulation (PR) 63/2019..”
The government body in charge of trademark registration is the Directorate of Trade Marks and Geographical Indications, part of the DGIP of the MoLHR.
The “first to file” approach is in effect, as stated in Article 20 of the Indonesian Trademark Act of 2016. This implies that the first company or legal entity to register a specific trademark in Indonesia will have first dibs on using it.
How to Register Trademarks in Indonesia?
The Indonesian law mandates that foreign companies and individuals who want to register their trademark in Indonesia should register the same through a legal consultant. There is a need to sign a “Power of Attorney” as well as a “Declaration of Entitlement” so as to enable the consultant to register the trademark in Indonesia.
Before registering a particular trademark, there is a need to conduct a trademark search and ensure that a particular trademark complies with the laws on trademarks in Indonesia. The trademark search allows the company to ensure that there is no moral conflict of the proposed trademark and to ensure that there is no other entity that has the trademark rights concerning that particular mark.
The final step in the registration of the trademark is the filling of the trademark with the Directorate General of Intellectual Property. Once approved by the Directorate, Trademark is registered.
The applicant should be ready with the subsequent documents:
It should be noted that since 2019, e-filing is that the only acceptable method of filing in Indonesia.
The Application is published in the mark gazette within 15 from the filing date. The Publication lasts for 2 months and the Same is published periodically by the concerned ministry in electronic or non-electronic media. Now, the opposition phase will come before the actual examination. As a result, when the trademark application has been submitted, they will start the two-month opposition period with publishing. Third parties can object on the grounds that the trademark cannot be registered or that its application must be denied. During the two-month publication period, an objection to a trademark application may be submitted.
If there is opposition, the examination must be finished within 90 working days (about 4-5 months), according to the present legislation. The substantive examination must be finished in 30 working days if there is no objection (around 1.5 months).
The protection period after the registration of a mark is (10) years, for seeking protection for a term beyond 10 years, renewing the registration 6 months before the date on which the concerned mark loses its validity is preferable.
Renewal can be done 6 months before and 6 months post the expiry date.
Renewal Requisites: Power of attorney.
A declaration of ownership for the targeted mark.
Statement confirming continued use of the mentioned mark.
In Indonesia, using a mark that is identical to a registered trademark can result in civil liability and criminal penalties, including:
The owner of the trademark may potentially bring a legal case to recover damages.