01-25-2017 (Newsletter Issue 2/17)
New Trademark Law in Force
The new Trade Mark and Geographical Indication Law were passed by Parliament on October 27, 2016, and went into effect on November 28, 2016.
It introduces a number of significant changes to the registration procedure, protection and enforcement of trademarks, which are for example the following:
- Publication prior to examination: The trademark application will be published, for a period of two months instead of the previous three and the publication stage will occur before the substantive examination stage.
- The new law reduces the documentary requirements to file a trademark application.
- Non-traditional marks are introduced such as holograms, three-dimensional marks and sound marks.
- Official fees of trademark application filings will now be determined based on the classes of goods and/or services covered.
- The law allows to apply for a trademark similar to a generic trademark, as long as there is a distinguishable element.
- The renewal period has been changed to six months before the expiry of the trademark and a grace period has been introduced of six months after the end of the 10-year protection period.
- New Law introduces a provision on registration of international trademarks which will enable Indonesia to adopt the Madrid Protocol.
Pending Trademark applications which have been filed before the effective date of the new law will be processed based on the old Trademark Law.
Source: Baker McKenzie, Indonesia
11-22-2016 (Newsletter Issue 21/16)
Official Fees Changed
Government Regulation No. 45 of 2016 on Non-Taxable State Revenue introduces a number of increases to the official fees.
The new official fee for filing a trademark application is IDR 2 million per class without limitation on the number of goods/services as of November 10, 2016.
Significantly, the official filing fee for trademark applications is now calculated based on the number of classes, regardless of whether the application is filed on a single-class or multiple-class basis.
Source: Tilleke & Gibbins International Ltd., Indonesia
11-09-2016 (Newsletter Issue 20/16)
Draft of New Trademark Law
A parliamentary committee of Indonesia's House of People's Representatives has reviewed and approved the draft of New Trademark Law. The New Trademark Law is expected to be enacted in November 2016.
The new regulations are highlighted as follows:
1. Mark shall mean a sign that is displayed graphically in the form of a picture, name, word, letters, figures, composition of colors, in the form of 2 (two) dimensional and/or 3 (three) dimensional, sound, hologram or a combination of said elements to distinguish goods and/or services produced by a person or legal entity in the activities of trade in goods or services.
2. Mark that are protected consist of a sign in the form of image, logo, name, word, letter, number, color composition, in the form of 2 (two) dimensional and / or 3 (three) dimensional, sound, hologram, or a combination of the two (2) or the more elements to distinguish the goods and/or services produced by the person or legal entity in the trading of goods and / or services.
In terms of mark such as the form of 3 (three) dimensional, the specimen of mark that is attached is in the form of the characteristics of the mark in the form of drawing/painting that can be seen from the front, side, top, and bottom.
In terms of mark such as voice, the specimen of mark that is attached should be a notation and sound recordings
3. The minimum requirements in filing of trademark application in order to be provided the filing date shall consist of :
a. Scanned copy of signed Power of Attorney and Statement on Ownership of the Mark
b. The complete name and address of applicant
c. Specimen of the mark (in JPG format)
d. Specification of goods/services that will be covered by the application
e. Class of good/services
Meanwhile, the original signed Power of Attorney and Statement on Ownership of the Mark may follow within 1 (one) month after the filing date. If the original document could not filed within said period, then the application will be deemed withdrawn.
4. The Official Publication in the Official Gazette shall be published for 2 (two) months and it shall be made at least 15 (fifteen) days after the filing date.
5. In terms of there is no any objection or opposition from the third party, the Trademark Office will examine the application 1 (one) month after the expiry date of publication and the examination shall be finished in the period of 5 (five) months at the latest.
6. The renewal application of trademark registration shall be filed within 6 (six) months before expiry date of trademark registration. The late filing of renewal application may be filed within 6 (six) months grace period after the expiry date of registration by paying a fine/penalty amount of USD 170.
The written Declaration of Use and the Power of Attorney have to be filed along with the renewal application and the Evidence of Use of Trademark is not required in filing of renewal application.
Requirements for filing the renewal application for trademark registration are as follows:
1. Scanned copy of certificate of registration (if any) or information on trademark registration number
2. Scanned copy of signed Power of Attorney and Statutory of Declaration duly signed by the proprietor of trademark registration. No need to be legalized/ notarized.
Source: Estumark LLP, Indonesia
04-05-2016 (Newsletter Issue 6/16)
Recordal Regulation of IP Licences Implemented
On February 24, 2016, the Ministry of Law and Human Rights issued Ministerial Decree No. 8 of 2016 concerning the Requirement and Procedure of Intellectual Property Licence Recordal, which serves as an implementing regulation for the recordal of IP licences.
The Decree provides that recordal applications must be accompanied by:
1. A copy of the licence agreement (It may be possible to record a simple confirmatory agreement setting out key terms, without disclosing confidential terms);
2. A copy of the registration certificate;
3. An original power of attorney;
4. The recordal fees (which are as stipulated in Government Regulation No. 45 of 2014 concerning Types and Tariffs of non-tax state revenue applicable to the Ministry of Law and Human Rights);
5. A special statement form confirming that the recorded licence agreement relates to intellectual property that is:
- still within the protection period;
- does not harm the national economy, development of technology; and
- is not against the provision of law regulation, ethics and public order.
It should be noted that although the Decree states that applications can be filed either electronically or non-electronically, electronic filing is not currently available to the public.
Once filed, every application for IP licence recordal will be examined. If there are formality issues, the applicant will be notified and given 10 days within which to comply, failing which the application will be deemed withdrawn. If all requirements have been completed, the licence agreement will be recorded and published.
The recordal will be valid for five years; thereafter, subsequent re-applications can be made.
Source: Rouse & Co. Internatinal LLP, Indonesia
11-25-2015 (Newsletter Issue 18/15)E-Filing for Renewal of Trademarks Possible NowOn September 28, 2015, the Directorate General of Intellectual Property (DGIP) officially launched the online application for the renewal of registered trademarks.
The online application shortens the renewal process from the current period of at least 1 year to a maximum of 14 working days. Not only does this online application reduce the time taken to submit and process the trademark renewal, but it also simplifies the entire process. It is done in an efficient step-by-step manner that begins with filling in the online form and uploading the relevant supporting documents. This is then followed by the receipt of the billing code for payment, which must be settled within 3 days.
The online application can be accessed here.
Source: KASS International Sdn Bhd, Malaysia
07-28-2015 (Newsletter Issue 12/15)New Online Integrated Information PlatformThe recent introduction of the Intellectual Property Right (IPR) Data and Information Service System or “Layanan Data dan Informasi Hak Kekayaan Intelektual (LADI HKI)” has taken Indonesia’s Director General of Intellectual Property (DGIP) one step forward in serving IPR owners and their agents alike.
It is a new online integrated information platform for retrieving data on trademark, patent and industrial design applications in Indonesia. Currently it is available in one language: Bahasa Indonesia. The following information can be accessed:
Trademark: Information can be filtered by category, i.e., all kinds of marks, trademarks, collective marks, service marks, and renewed marks; or based on the status of application, i.e., expired, pending, cancelled, registered, deleted, withdrawn, and rejected marks.
Patent: Information can be filtered by category, i.e., all types of patents, patents and simple patent (utility model/innovation); or based on the status of application, i.e., rejected, granted, cancelled, pending and lapsed patents.
Industrial Design: Information in this section is filtered based on the status of the application, i.e., registered, pending, expired, cancelled, withdrawn, and rejected.
While the platform currently performs its tasks adequately, it has been noted by the contributor of the news that certain recent applications particularly for trademark are not covered yet.
To access the platform please click here.
Source: KASS International Sdn Bhd, Malaysia
07-04-2014 (Newsletter Issue 11/14)
Official Fees Increased
The Indonesian Directorate General of Intellectual Property (DGIP) announced the introduction of Regulation No. 45/2014 on Official Fees, which is effective from 3 July 2014, onwards.
Under this new Regulation, the official fees for many actions relating to IP prosecution will be increased. As from 3 July 2014, the new official trademark filing fee is IDR 1,000,000 for up to 10 items of goods/services per class, with every subsequent 1-10 items of goods/services exceeding the first 10 items incurring an additional official fee of IDR 1,000,000.
Source: Tilleke & Gibbins, Indonesia
06-24-2014 (Newsletter Issue 10/14)
Trademark Law Soon Amended
Trade marks in Indonesia are regulated by Trade Mark Law No 15 of 2001. But in the near future the Indonesian government will introduce several amendments as follows :
1) The Indonesian Trade Mark Office will expand the definition of a trade mark to include : three-dimensional marks, sound marks, holograms or combinations. At present, Indonesian Trade Mark Law can’t regulate these types of trade marks. This amendment will be done to harmonise with Singapore Treaty on The Law of Trademarks.
2) The Indonesian Trade Mark Office will make the time of trade mark registration shorter so it will take only 11 months from filing until grant.
3) The Indonesian Trade Mark Office will make a change to make the publication process the first step before doing the substantive examination. Previously, the Office conducted the substantive examination before the publication period.
According to this change, the Indonesian Trade Mark Office will publish the application for three months and then it will conduct substantive examination for up to six months. If there is no trade mark that has a similarity in principle or in entirety with other marks, the Office will grant the trade mark certificate to the applicant within 30 days.
4) A trade mark renewal may be filed six months before the expiry date, but there will be a grace period for trade marks of six months after the expiry date.
5) The Indonesian government will adapt ASEAN Economic Community (AEC) harmonisation and Japan Indonesia Economic Partnership Agreement (JIEPA). The Indonesian government will revise its Trade Mark Law to accommodate the international registration of trade marks based on the Madrid Protocol, that will be effective by December 2015.
The crucial amendment to trade mark law in Indonesia is about the Madrid Protocol. The Indonesian government hopes that this can improve the number of trade mark applications from Indonesia to the entire world. It is simpler and cheaper, particularly for small and medium enterprises in Indonesia, to file their trade mark to the other Madrid Protocol members.
Moreover, the Madrid Protocol is expected to increase foreign investment in Indonesia, as it will increase trade and investment opportunities especially between ASEAN countries.
Source: Am Badar & Partners, Indonesia
08-07-2012 (Newsletter Issue 12/12)
The Indonesia Intellectual Property Office (“IIPO”) & corps annouced that it will be closed , as follows:
17 August 2012 in respect with Independence Day; and
20 August until 22 August 2012 in respect with Celebration of Eid Ul Fitr 1433 H.
All official deadlines shall be considered as fall on the next working day.
Source: AMR Partnership, Indonesia
07-30-2012 (Newsletter Issue 12/12)
10th Edition of Nice Classification
The Indonesian Trademark Office has adopted the 10th Edition of Nice Classification.
Source: Simonian IP, USA
08-18-2009 (Newsletter Issue 2/09)
Official Fees for Trademark Matters Revised
On May 28, 2009, the Indonesian government issued Government regulation No. 38 of 2009, which took effect June 3, 2009.
The new regulation includes several major changes to the official charges for trademark prosecutions:
The official charge for filing a trademark application is no longer calculated on a lump sum basis. Filing new trademark application (for up to 3 items in the specification of goods/services) was raised from IDR 450,000 to IDR 600,000 (about EUR 42.00). An additional fee for each item exceeding the 3rd of IDR 50,000 (approx. EUR 3.50) has been introduced.
Further, a fee of IDR 100,000 (approx. EUR 7.00) for issuance of registration certificate is imposed. This new charge will apply only to Certificates of Registration issued from June 3, 2009, onward; for those issued before that date, there will be no official charge.
Legal basis is the Trademark Act of August 1, 2001, amended on November 28, 2016. The new Trademark and Geographical Indication Law is Law No. 20 of 2016.
Trademark protection is obtained by registration.
Indonesia follows the first-to-file system.
Registrable as a trademark are all distinctive names, devices, words or characters, pictures, symbols, composition of colours or their combinations as well as three-dimensional marks, sounds and hologram marks.
The following trademark types are registrable: trade marks, service marks and collective marks.
The application is filed at the Directorate General of Intellectual Property Rights (DGIP).
Electronic filing/online filing of new application and renewal of trademark is possible as of November 2015. However, only local trademark agents can file a trademark application and renewal online.
Multi-class applications have been possible since March 2007.
Foreign applicants must file an application via a local trademark agent appointed as their proxy.
A non-legalised power of attorney and Declaration are the formal documents for filing.
The filing is followed by a formal examination of the application.
All trademarks that pass the initial formality examination will proceed directly to publication. The publication stage lasts 2 months. Only during these two months, the trademark application can be opposed by third parties. Afterwards, a substantive examination is conducted by the DGIP. If an opposition was filed during the publication/opposition time, it will be reviewed by the examiner during the substantive examination. The DGIP plans to reduce the substantive examination lead time to a maximum of 150 working days.
A trademark registration is valid for 10 years from filing date. The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the expiration date of the trademark registration.
Further practical details are available in our publication on this topic here
A trademark will be vulnerable to non use cancellation if not being used for 3 consecutive years as from the registration date or last usage.
Further practical details are available in our publication on this topic here
The official fee for filing a trademark application is IDR 2,000,000 per class without limitation on the number of goods/services. There is no fee for publication and registration.
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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here