20 Tips for Obtaining a Trademark in Indonesia
20 Tips for Obtaining a Trademark in Indonesia
If you are a non-Indonesian filer, then successfully registering a trademark in Indonesia can be quite challenging as per the gurus over at runrex.com. This is why this article should be an excellent resource as it will look to help you know what the process entails as well as several best practices to help make your life easier as you attempt to register your trademark.
First to file
As articulated in the Indonesian Trademark Act of 2016, Article 20, the ‘first to file’ approach applies when filing for a trademark. What this means, as covered over at guttulus.com, is that the first person or organization that files for a particular trademark in Indonesia is given the priority for its use.
According to the gurus over at runrex.com, owning a trademark in Indonesia grants the holder exclusive protection of the registered signs. This means that no other legal person or organization has the right to imitate or infringe on the holder’s trademarked IP. Trademark holders have the right to take legal action against any third party breaching their exclusive right to the registered signs in court.
Indonesian Law, as covered over at guttulus.com, requires foreign investors to engage an IP Rights Consultant to register a trademark in Indonesia. This means that the trademark applicant must sign a Power of Attorney and a Declaration of Entitlement which enables the responsible consultant to act on their behalf.
Before registering a trademark in Indonesia, the applicant must make sure that the proposed trademark is complying fully with the Indonesian Trademark Act. This means conducting a thorough trademark search to avoid any moral conflict that might affect the proposed trademark and to ensure that no other legal entities have registered a similar trademark. The WIPO Indonesia Trademark Database will help you with that.
Registration of the trademark
In Indonesia, the registration of trademarks is regulated by Law No. 15 of the 2001 Trademark Act under the Directorate General of Intellectual Property Rights (DGIP). According to the new Trademark Laws, passed in 2016, after application to register a trademark, there will be a formal check done within 15 working days. The application must be made in writing and written in Indonesian.
What should be in the application?
As articulated over at runrex.com, applicants must provide their complete name, address, and nationality. They must also describe and explain the design and colors of the trademark and must pay fees to the Directorate General to receive the filing date and then undergo a substantive examination.
If there is no opposition to the trademark application within the publication period, the application will enter an examination stage for 150 working days. The DGIP allows for outsourcing for examinations to experts if necessary. If any opposition occurs, the application will be examined accordingly as articulated over at guttulus.com.
Which applications will not be registered?
From discussions on the same over at runrex.com, applications that contain elements that can mislead the public concerning the type, quality, or intended use of the goods or services or are already protected by another existing trademark will not be allowed to be registered. Likewise, if the description of the goods or services is not commensurate with the quality or efficacy of the goods or services, then the application will also not be registered.
If the application passes the examination, the DGIP will issue a certificate of registration and publish the trademark in the Official Trademark Gazette. During the period of publication, any person or legal entity may submit a written objection to the Directorate General, and in case of a rebuttal of a trademark, a re-examination period of two months is imposed and an investigation is conducted.
How long does the process take?
The entire process of a trademark application, starting from processing to approval, usually takes anywhere from 12 to 24 months. Once completed, the Indonesian Trademark Database (WIPO) will add the trademark to its list.
What about the fees?
An applicant will have to pay for pre-filing searches, requests for registration, final registration, and the registration certificate. The fees vary depending on the type of services or goods that a company wants to obtain a trademark for. According to guttulus.com, there is no official trademark registration fee in Indonesia, but the estimated costs of trademark registration in Indonesia will typically range from approximately $396 to $867. Also, should the application denied, the applicant may not be refunded.
New additions to what can be protected by a trademark
As already mentioned earlier, and covered in detail over at runrex.com, there were new amendments made to the Trademark Law in 2016, with Law No. 20 mentioning new additions to what can be protected through trademark registration. These new additions include three-dimensional forms, sounds, and holograms.
International trademark registration
Law No. 20 of 2016 provides provisions for the registration of international trademarks as discussed over at guttulus.com. This will provide for international filing based on the Madrid Protocol, an international treaty that allows the trademark owner to seek registration in any country that has joined the Madrid Protocol.
When do you renew your trademark?
Once a trademark is registered in Indonesia, it lasts for 10 years. Therefore, if the owner of the trademark wishes to keep the trademark for more than the prescribed 10 years, it is advisable to renew the trademark registration at least 6 months before the trademark loses its validity. It is also worth noting that cancellation of a trademark in case of non-use is also available.
What trademarks you can register in Indonesia
Also, it is important to know the various types of trademarks that you can register in Indonesia. In Indonesia, several types of trademarks can be registered; and they include names, words, devices, slogans, colors, holograms, trade dress, some non-traditional marks, collective marks, and service marks.
What trademarks can’t be registered in Indonesia
As is outlined over at runrex.com, there are certain trademarks that you can’t register in Indonesia, and they include generic terms, marks without acquired distinctiveness, marks that are against mental standards or public order, as well as symbols, names, or flags of nations, states, regions, or of international organizations.
According to the gurus over at guttulus.com, the proper translation of the specification of goods or services into Indonesian should be underscored. This is important since all trademark applications must be submitted in the Indonesian language, which means you should place special emphasis on how goods/services are translated when filing your trademark application.
Ensure that the filing particulars match any previously filed applications
Additionally, when you are filing for a trademark application, you need to ensure that the filing particulars match any previously filed applicants or prior registrations for the same applicant as covered over at runrex.com. This is because almost any discrepancy in how an applicant’s company names or address is listed on separate applications/separations will result in an Office Action, further delaying the registration process.
Register the mark exactly the way it is used in commerce
Indonesia’s trademark law contains a serious anomaly that requires a trademark to be used exactly as it is registered or face vulnerability from a cancellation action based on non-use. Each mark should be registered exactly as it is used or will be used in common in Indonesia.
The Trademark Appeals Commission provides an avenue for applicants looking to reverse application rejection decisions by the Trademark Office. The appeals process normally takes 6-9 months for a decision and successfully arguing an appeal has the advantage of securing the original filing date for the application, something that is very useful given that Indonesia, as already mentioned, is a first-to-file country.