In Indonesia, trademarks are regulated by the Trademark Act No 15 of 2001 under the Directorate General of Intellectual Property Rights.
According to the Act, the mark (trademark and service mark) is a sign in the form of words, numbers, letters, figures, colors, composition, symbols or a combination of allthose used to distinguish the goods or services of one person or legal entity from those of others.
Along with the significant increase in global business competition, most business people are also aware of the increasing importance of trademark protection as a great company asset to business viability. For countries that are already members of Madrid Agreement and Protocol, trademark registration will be conducted through a single application to the national or regional intellectual property office. Countries that are not yet members of the Madrid system will register trademarks based on trademark laws.
#1 Significance of registering a trademark
The trademark is a valuable asset for any company because the trademark is considered intellectual property (IP). In Indonesia, it’s advisable to register your trademark before conducting business due to a high rate of IP piracy.
You may derive some advantages from registering your trademark, such as:
Constitutional priority right as first to file. Theperson or legal entity who is the first to file the trademark generally has priority to use the registered trademark
Exclusive protection of the product (goods and services) from infringement claims by others in commerce activities
Legal reinforcement of the position of trademark owners in court if there is litigation
As a value added of goods or services in quality and reputation to the public
#2 Trademark Registration in Practice
Registering a trademark may be time consuming and costly. In Indonesia, if all goes well, foreign businesses need approximately 12-24 months to complete the registration process. There is no guarantee the application will be approved and no refund of fees is made if the application is denied. Here are some procedures involved in trademark registration in Indonesia:
Find an Intellectual Property Right Consultant (proxy). According to the Indonesian Trademark Act, foreign applicants are required to process trademark registration through the local IP consultant with a signed Power of Attorney and Declaration of Entitlement.
Ensure that the proposed trademark complies with the rules. Some conditions can lead to application denial such as: similarity of essential features with a registered product, a well-known product or with a known geographic indication; is in contradiction of moral, religious or public order; and has become public property.
Do someinitial research to ensure that your proposed trademark hasn’t been registered by another person or legal entity. Checking online is the easiest first step, by searching the database of Indonesian trademark information from DGIPR which is integrated with the WIPO (World Intellectual Property Organization) or looking in the ASEAN TMview. Based on the latest data updated in 2014, Indonesia had about 364,363 registered marks, excluding those in pending status, so it’s important ensure that the proposed trademark is not in line for approval.
Complete requirements properly and thoroughly, don’t leave anything incomplete. The general procedures of trademark registration consist of formal examination, substantive review and an announcement.
Formal Examination The DGIPR examiner checks whether the application is in accordance with the requirements and this may take 30 days. It includes items such as whether information about the applicant is complete and written in the Indonesian language, details of mark and its specification, and if the filing feewas submitted.
Substantive Review This stage decides whether the application is approved or denied. The substantive review process of the trademark features may take up to 90 days.
Announcement After being approved, the trademark will be announced in the Trademark Official Journals for 3 months and is opens to objection or opposition. If there is no significant objection within 3 months, the certificate of trademark will be issued and is valid for 10 years . It is also renewable.
#3 Usage of the ® Registered Trademark and ™Trademark
Registering your trademark doesn’t guarantee it is completely safe. Hence, using ® or ™ in your trademark to affirm to the public that you trademark is registered is another good way to avoid any infringements on your trademark. You are not obliged or required to obtain permission to use this symbol. The ® symbol is used after the DGIPR issues the trademark certificate and the ™ is for an approved trademark that has not formally been registered yet.
In Indonesia, trademark registration applies nationally and in case a trademark isn’t used for 3-5 years from the registration date, the certificate will be revoked. This means that the holder will lose his or her rights for the trademark.
Currently, the Indonesian government is in process of revising the Indonesian Trademark Act, which will be superseded by the Madrid Protocol by the end of 2015. Under the Madrid Protocol, foreign applicants can register their trademark in one application, one language, with one single office, one set of fees and one currency. With this registration process, Indonesia will still have the right to decide whether to protect the proposed trademark or not.
Nevertheless, foreign businesses who register their trademark through the international route still need legal assistance for a comprehensive understanding of the legalities of running a business in Indonesia. This can prevents any future disputes or infringement.