A Concise Guide to:
Trademark in Indonesia
Since 1 August 2001, Indonesian trademark law is regulated under Law No. 15 of 2001 on Mark (“Law No. 15/2001”) for 16 years until October 2016. The Law No. 15/2001 still adopts the traditional trademark which makes Indonesia different from other jurisdictions who have adopted the non-traditional trademark. However on 27 October 2016, The House of Representatives (“DPR”) enacted the new Trademarks Bill into law. The new legislation (the “2016 Trademarks Law”) had long been anticipated as it relates to the requirement under the ASEAN Economic Community (“AEC”) accords for all ASEAN member countries to implement the 1989 Protocol to the Madrid Agreement Concerning the International Registration of Marks.
The new legislation is aimed at encouraging local businesses to broaden their markets, both locally and overseas, supported by the availability of immediate and effective legal protection. It provides a trademark owner with the option of filing a trademark through a foreign country’s trademark office (“International Bureau”), in accordance with the Madrid Protocol. It further modifies the trademark process and introduces the possibility of engaging independent experts to conduct the trademark examination process, a concept that was first introduced in the new Patents Law, which was enacted on 27 July 2016.
History of Indonesia Trademark Law
Since independence, Law No. 21 of 1961 on Company Trademarks and Commercial Trademarks (1961 Trademarks Law) was enacted to replace the colonial era legislation. The 1961 Trademarks Law was the first intellectual property legislation in the country aimed at protecting consumers against counterfeit products, Its date of promulgation (11 November 1961) is now marked each year as National
Intellectual Property Day.
On 10 May 1979, Indonesia ratified the Paris Convention for the Protection of Industrial Property, through Presidential Decree No. 24 of 1979. However, Indonesia entered a number of reservations related to the scope of industrial property, national treatment, patent regulation, industrial design regulation, trademark regulation, special national industrial property services, and disputes between member states.
On 28 August 1992, the DPR enacted Law No. 19 of 1992 on Trademarks to replace the 1961 Trademarks Law. Then, on 15 April 1994, Indonesia agreed to sign the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”). Thereafter, with Indonesia now being a World Trade Organization member, the DPR enacted Law No. 15 of 2001 on Trademarks (2001 Trademarks Law) in 2001 so as to being Indonesia’s laws and regulations related to intellectual property into line with the TRIPS Agreement.
Following the enactment of the 2001 Trademarks Law, the number of trademark applications increased significantly. However, not all interests were capable of being accommodated by the legislation, and with the AEC accords requiring the harmonization of the intellectual property regimes of each Asean member state, it became apparent that new trademark (the “2016 Trademarks Law”) legislation would be necessary.
Online Registration is applicable on the new Trademark Law
In line with international developments, the 2016 Trademarks Law provides protection to both conventional and non-conventional trademarks, including both visible and non-visible elements. The protection of non-conventional trademarks was first introduced under the Singapore Treaty on Trademarks, which was ratified by over 40 countries, including the Benelux organization for intellectual property. In line with this, the definition of “trademark” under the 2016
Trademarks Law has been broadened to also include non-conventional elements such as two or three-dimensional forms, sounds and holograms, and any combination of such features. While the Directorate General of Intellectual Property (“DGIP”) has typically accepted all visual trademark applications that are relatively easy to compare, a potential challenge for the 2016 Trademarks Law is the provision of effective protection to sounds and holograms, elements that
are still uncommon in Indonesia.
Another significant change under the 2016 Trademarks Law pertains to the trademark registration process, which has now been accelerated. The previous trademark application
process would begin only after the DGIP assessed the completeness of the administrative submissions, which would be followed by a substantive examination by an examiner for a prescribed period of nine months. If the application was not rejected or was not subject to comments by the examiner, the DGIP would then publish the trademark application in the Trademark Gazette, which would be followed by a three-month public review process. If no opposition was filed by a third party within 30 days from the date of expiry of the announcement period, the DGIP would then issue the trademark certificate. In theory, the trademark
registration process took approximately 12-18 months, but in practice it could take more than 24 months due to the huge backlog of applications in the DGIP.
By contrast, under the 2016 Trademarks Law, the trademark registration process begins with the filing of a trademark application with the DGIP. Upon receipt of the application, the DGIP will conduct an administrative examination process. If the application is accepted, it will be published (for potential opposition) in the Official Gazette of Intellectual Property 15 days after the filing date. There then follows a period of two months, known as the announcement period, which is intended to allow third parties to file oppositions. If no opposition is filed by a third party within 30 days of the date of expiry of the announcement period, the trademark application will be further processed through the conducting of a substantive examination by the examiner. This examination should be completed within five months, at the latest. Upon completion of the examination, the DGIP will then issue the trademark certificate.
The 2016 Trademarks Law also allows a trademark application to be submitted online and process through PT Bizindo Asia Global (www.bizindo.com). You can email to firstname.lastname@example.org or whatsapp to +628156290000. Overall, the trademark registration process under the 2016 Trademarks Law should theoretically take about eight months, although in practice it is almost inevitable that the process will take much longer due to the backlog of applications in the DGIP.
The 2016 Trademarks Law introduces a new rule on generic trademarks that have been registered with the DGIP’s General Registry. A generic trademark is a trademark that has become the generic reference for and/or association to a particular product or service. Under the previous legislation, a generic trademark owner is the sole owner of such trademark. With the enactment of the 2016 Trademarks Law, any party can register a generic trademark as long as it incorporates additional words as distinguishing features. Such provision eliminates the possibility of dominance of a trademark that may in the future become generically known as the name of a particular product or service.
A trademark license is a permission given by the owner of registered trademark to another party through an agreement, in which the owner as the licensor grants its rights to the licensee for using the trademark, either for the whole or part of goods and/or services as registered in the trademark. The use of registered trademark by the licensee in Indonesia is considered to be no different with the use of the registered trademark by the owner as the licensor.
The license agreement is valid to all territories in Indonesia, unless the license agreement states otherwise that the trademark licensing can only be implemented in certain territory. The license agreement can also stipulate whether the licensee may only use the trademark license by itself or may grant a license to another licensee (sub-licensee). Things that need to be considered when making a trademark license agreement are as follows:
- the period of trademark license cannot be longer than the period oftrademark;
- The license agreement cannot contain provisions that may be detrimental to the Indonesian economy or contain restrictions that can inhibit the ability of Indonesian nation in controlling and developing the technology;
- The license agreement must be applied for recording to the trademark office, in order to be recorded in the general register of trademarks and announced in the official gazette of trademarks.
The license agreement has no legal consequences to the parties (in the license agreement) and third party if it is not recorded to the trademark office. The requirements and procedure for applying the recordal of license agreement is regulated under the Ministry of Law and Human Rights Regulation No. 8 of 2016 on Requirements and Guidelines of Application for Registration of Intellectual Property License Agreement. The application can be done electronically or nonelectronically. Documents that have to be submitted are:
- License agreement or proof of license agreements(copy);
- Trademark certificate (copy);
- Power of attorney, if the application is submitted by proxy (original); and
- Payment receipt of registration application fee (original).
Transfer of Rights
The transfer of rights to a registered trademark occurs due to several matters:
- Agreement, or
- Other reasons permitted under the regulations.
The transfer of registered mark shall be recorded in the general register of mark, through an application to the Directorate General, along with its supporting documents.
The Recognition of Well-Known Marks
The concept of “well-known marks” has been adopted in Indonesia for a number of years. The concept was originally derived from the Paris Convention for the Protection of Industrial Property (“Paris Convention”), whereby a product with a well-known mark is distinguished from a normal mark. The degree of protection enjoyed by well-known marks remains relatively high in comparison with that enjoyed by normal marks. As a consequence, many businesses would love to have their marks classified as well-known marks.
The criteria and characteristics of any mark which a party wishes to categorize as a well-known mark are inevitably influenced by how the international community defines and classifies a mark as one that is well known. However, ultimately, competent authorities in each country have the responsibility of deciding whether a mark is well-known or not.
The following section will analyze the definition and scope of well-known marks from three different perspectives: 1) International frameworks; 2) Indonesia frameworks; and 3) Court practices.
Any legal provisions which relate to marks and patents are outlined in the Paris Convention on the Protection of Industrial Property (“Paris Convention”). Indonesia is a signatory to the Paris Convention, which follows as a direct consequence of its participation in the World Trade Organization (“WTO”), and this is especially pertinent in relation to the ratification of Agreements on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”).
The Paris Convention demands that its members prohibit, refuse or cancel the registration of any trademarks which are deemed to be well known in a relevant country by the country’s relevant competent authority.8 Under the formulation of this provision, such refusals or cancellations may only be granted towards trademarks.
In 1999, the World Intellectual Property Organization (“WIPO”) established a Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (“Joint Recommendation”). Under the Joint Recommendation, WIPO set out lists of criteria which should be met before a mark can be recognized as a well-known mark and these employ clearer and more measureable methods than TRIPS does. The recommended criteria to be met by a mark in order that it be classified as a well-known mark are as follows:
- Public Knowledge or Recognition
A degree of knowledge or recognition as regards the mark within the relevant sector of the general public. The relevant sector of the public encompasses but should not be limited to the following factors:
a. Actual and/or potential consumers of the marked goods and/or services;
b. Persons involved in the distribution channels of the marked goods and/or services; and
c. Business circles dealing with the marked goods and/or services.
- Usage of the Mark
The duration, extent and geographical area of any use of the mark.
- Mark Promotion
The duration, extent and geographical area of any promotion of the mark, including advertising, publicity and presentations at fairs or exhibitions of the goods and/or services to which the mark applies.
- Mark Registration
The duration and geographical area of any registrations, and/or any applications for registrations of the mark, to the extent that they reflect use or recognition of the mark.
- Successful Legal Enforcement
Record of successful enforcement of rights for the mark, in particular the extent to which the mark was recognized as well known by the competent authorities.
The associated value within the mark
As stated above, the privilege of being categorized as a well-known mark offers a degree of protection. Thus, any mark will be deemed to be in conflict with a well-known mark in cases where the following conditions are met:
- A mark (or its essential part) constitutes a reproduction, an imitation, a translation or a transliteration, which is likely to result in confusion as regards the well-known mark, if the mark is used; and
- A mark is the subject of a registration application or is registered, in respect of goods and/or services which are identical or similar to the goods and/or services to which the well-known mark applies.
In a more general sense, a non-similar mark may also be in conflict with a well-known mark in cases where the mark (or its essential parts) constitutes a reproduction, an imitation, a translation or a transliteration of the well-known mark in question, and if one of the following conditions is fulfilled:
- The use of the mark would indicate a connection between the marked goods and/or services and the well-known mark and would be likely to damage the interests of the owner of the well-known mark;
- The use of the mark is likely to unfairly impair or to dilute the distinctive characteristics of the well-known mark; or
- The use of the mark would lend an unfair advantage in terms of the distinctive characteristics of the wellknown mark.
The criteria for well-known marks which are set out under domestic legislation can be found in Ministry Regulation No. 67 of 2016 on the Registration of Marks (“Ministry Regulation 67/2016”). Ministry Regulation 67/2016 sets out a number of crucial parameters which are to be used in order to determine whether or not a mark is to be classified as a well-known mark, as well as to determine the knowledge level of the general public in connection to any such mark within the relevant business sector. Below are the Indonesian criteria for well-known marks:
- Public Knowledge: A degree of public knowledge or recognition as a well-known mark as regards the mark in question within the relevant business sector.
- Sales Volume and Profits: Sales volume of goods and/or services and profits acquired from the usage of the mark by its owners.
- Market Share: Market share which is controlled through the use of the mark in question and which involves the circulation of goods and/or services within the marketplace.
- Area Reach: Area reach of the usage of the mark.
- Usage Duration: Duration of the usage of the mark.
- Promotion: Intensity and promotion of the mark, including the investment value expended during any such promotion.
- Mark Registration: Registration of marks or applications for the registration of marks in other countries.
- Legal Enforcement: The degree of legal enforcement as regards the mark, specifically in relation to the acknowledgement of the mark as a well-known mark by the relevant authorities.
- Reputation and Quality Control: The value which is attached to the mark in question and which is obtained as a result of its reputation and of the quality control of the marked goods and/or services.
The classification of a well-known mark is not only beneficial from the perspective of brand prestige but is also important for the registration of well-known marks. Consequently, any applications for the registration of marks will be rejected in cases where marks possess strong similarities (either partially or in their entirety) to:
- Well-known marks which are owned by other parties and which lie within the same categories of goods and/or services; or
- Well-known marks, which are owned by other parties and which do not fall into the same categories of goods and/or services (non-similar marks), but which fulfill the following conditions:
a. An objection has been filed by the owner of the well-known mark against the mark registration application; and
b. The well-known mark has already been registered.
The following section will elaborate upon the approach adopted by Indonesian courts to disputes involving well-known marks and will assess two points of view: (1) Supreme Court jurisprudence; and (2) Recent court decisions for cases involving well-known marks.
- Supreme Court jurisprudence
As mentioned above, the first piece of national legislation to adopt the concept of well-known marks was Law No. 19 of 1992 on Marks, as amended by Law No. 14 of 1997 (collectively referred to as “Mark Law 1992”). However, in a manner similar to Mark Law 2001, Mark Law 1992 did not ultimately offer any definition as regards the concept of well-known marks. However, the absence of this definition did not necessarily mean that Mark Law 1992 did not offer any protection to well-known marks, as it recognized the protection of well-known marks as one of its underlying principles. In fact, Mark Law 1992 only defines three factors which were to be used in order to determine a well-known mark, specifically:
a. Public knowledge;
b. The reputation of the mark as a result of the promotion of its owner; and
c. Mark registration in other countries (if any).
In a bid to overcome this loophole, on 28 November 1995, the Supreme Court rendered Decision No. 1486 K/Pdt/1991 (“SC Jurisprudence 1991”), which asserted that a mark was to be considered as a well-known mark in cases where the mark in question:
a. Had been circulated internationally outside of its country of origin; and
b. Had had its registration proven in a number of countries.
SC Jurisprudence 1991 was adhered to by fellow judges in connection with well-known mark cases that were brought before the courts in Indonesia right up until 2000. Post-2000, the Supreme Court rendered another decision on well-known marks based on Mark Law 2001, specifically Supreme Court Decision No. 022 K/HaKI/2002 (“SC Jurisprudence 2002”). SC Jurisprudence 2002 set out the following characteristics which were to be attributed to well-known marks and which were substantially similar to the various characteristics which were originally set out under Mark Law 2001, including:
a. Public knowledge in connection to the mark in question within the relevant business sector;
b. The reputation of the mark, which is obtained through its promotion; and
c. The receipt of the registration of the mark in question in another country.
- Recent court decisions for cases involving well-known marks, such as: the Pierre Cardin case, the IKEA case and the Hugo Boss case.
How Bizindo can help?
We can help you on below:
- Trademark Search
- Trademark Registration
- Priority Claim
- Opposition: If there is an opposition or Objection from othe party in the registration process, provided that we represent the client for the trademark registration
- Appeal: If the application is rejected in the opposition process, and the client wants to file an appeal of trademark in the Trademark
- Registration of Trademark Assignment Recordation
- Recording Change of Name or Address
- Obtaining certified copy of registration certificate
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