The House of Representatives (“DPR“) enacted the Trademarks Bill into law on 27 October 2016. The new legislation (the “2016 Trademarks Law“) i 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. ii
The history of trademark regulation in Indonesia can be traced back to the colonial period, when the Reglement Industrieele Eigendom of 1912 was applicable, which covered the use of company marks. Following 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 legislation would be necessary.
The following are the key changes brought about by the 2016 Trademarks Law.
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. The new system officially became operational in the last week of December 2016. However, we would expect that it may take a couple of months for it to become fully functional.
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.
To be able to file an application in Indonesia for the international registration of a trademark, the applicant either must have applied for registration of the trademark in Indonesia or already owns the trademark in Indonesia. Further provisions on the international registration of trademarks under the Madrid Protocol are to be provided for by way of Government Regulation.
With the entry into force of the 2016 Trademarks Law, the registration process should be quicker and more effective than was heretofore the case. While the recognition of non-conventional trademarks will pose challenges for DGIP officials, it should encourage local SMEs to be more creative when designing their trademarks.
The 2016 Trademarks Law also provides better protection to local communities that have products that could benefit from geographical indication protection. Such protection for products that are uniquely local would place them in a stronger position when competing against similar products from other ASEAN member countries.
In conclusion, for the 2016 Trademarks Law to be effective, it will need to be supported by the necessary implementing regulations, particularly regulations defining the criteria for well-known trademarks and international registration.
AHP Client Alert is a publication of Assegaf Hamzah & Partners. It brings an overview of selected Indonesian laws and regulations to the attention of clients but is not intended to be viewed or relied upon as legal advice. Clients should seek advice of qualified Indonesian legal practitioners with respect to the precise effect of the laws and regulations referred to in AHP Client Alert. Whilst care has been taken in the preparation of AHP Client Alert, no warranty is given as to the accuracy of the information it contains and no liability is accepted for any statement, opinion, error or omission.