Trademark Registration In Indonesia

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?

  • Trademark Consultant

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.

  • Trademark Search

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.

  • Trademark Registration

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.

Documents Required for Filing a Trademark Registration in Indonesia

The applicant should be ready with the subsequent documents:

  • Application form, with the stipulated form fee, The form must include.
  • Credentials of the applicants including Complete name along with proxy’s address, when the application is made by proxy.
  • Description of the mark (if the requested trademark contains a colour element or a combination of such colours).
  • nation and date of first acceptance of the application, where priority rights are claimed by the applicant.
  • Specifications of the applicable classes and/or services under the WIPO Nice Agreement Concerning the International Classification of Goods and Services, List of products or services as per the NICE classification.
  • Three-dimensional markings' characteristics (if applicable). In the case of a sound mark, both recording and musical notation.
  • Clear copies of the mark.
  • Marks having non-English words should be accompanied by a licensed translation of the same.
  • Power of attorney.
  • Statement of mark ownership.

It should be noted that since 2019, e-filing is that the only acceptable method of filing in Indonesia.

Publication and Objection of Trademark 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).

Possible grounds for Rejecting the claim for Registration of a Mark

Trademarks that:

  • Contravene state policy, applicable laws and regulations, public order, decency, morality, and religion, are ineligible for registration.
  • esemble, are connected to, or specifically designate the category of products and/or services to which they apply.
  • contain information that is false about the products' origins, quality, nature, size, categorization, or intended use.
  • A mark concerning a protected plant variety.
  • A mark that lacks distinguishing features.
  • Functional and generic marks can’t be registered.
  • A trademark application must also be denied if the intended trademark is the same as or nearly the same as a prior trademark application or registration made by a third party in connection with identical products or services.
  • a well-known trademark for the same products and/or services belonging to a third party.
  • a well-known trademark that is used in connection with various goods and/or services and is held by a third party but does not meet specific criteria
  • a geographical indicator that is registered.
  • a renowned person's name, image, or name of a company controlled by a third party, unless that person has given their written authorization beforehand.
  • The name or abbreviation of a state's or an organization's name, flag, emblem, or symbol
Term and Renewal of Trademark Registration In Indonesia

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.

Liabilities for Trademark Infringement

In Indonesia, using a mark that is identical to a registered trademark can result in civil liability and criminal penalties, including:

  • Imprisonment of up to five years and/or a fine (currently up to IDR 2 billion);
  • If the unlicensed use is not identical but can be proven to be similar, imprisonment of up to four years and/or a fine (currently up to IDR 2 billion).

The owner of the trademark may potentially bring a legal case to recover damages.