INDONESIA: AMENDMENTS OF THE TRADE MARK LAW 2016

November 30th, 2016

 

Recently, the Indonesian House of Representatives has passed amendments to Indonesian trade mark law. The amended trade mark law came into force on 10 November 2016. There are several amendments that we would like to highlight as the new laws will significantly affect the applicants and their respective applications.

To begin with, the most anticipated change in the Indonesian trade mark law is the allowance of new types of non-conventional trade mark elements to be registered at the Trade Mark Office i.e. three dimensional (3D), sound and hologram. It also has been highlighted that the mark in the form of 3D must be submitted in the form of painting or drawing that describes the side, front, bottom and top whilst for mark such as voice, must be attached in the form of notation or sound recordings. The addition of these new non-conventional trade mark elements in the Indonesian Trade Mark Office will allow protection of the applicant’s mark in a bigger scope.

The newly reformed trade mark laws have also emphasized on the minimum requirements for filing a trade mark in Indonesia. In order for the application to be processed, applications must provide the followings: (i) scanned copy of signed Power of Attorney (PoA) and Statement of Ownership of the Mark; (ii) complete name and address of the applicant; (iii) specimen of the mark (in .jpeg format); (iv) specification of goods and/or services that will be covered by the application and (v) the class of good and/or services. Having said that, the original documents (POA and Statement of Ownership) may follow within one month after the filing date or the application deemed to be withdrawn.

Apart from that, the new law has stated that the official publication shall be published for two months in the official gazette and it has to be made at least 15 days prior to the filing date. If there is no opposition from a third party, the Trade Mark Office will require one month to further examine the application and issue a certificate of registration within five months as the examination period ends. As the trade mark reaching its expiry date, a renewal application can now be filed either six months before or after the due date, with a penalty fee. To file for a renewal, a written Declaration of Use and the PoA must be submitted together with renewal application. However the submission of evidence of use of the trade mark is optional. In the case of a trade mark registration renewal, applicants are required to submit scanned copy of certificate of registration (if any) or the trade mark registration number and a scanned copy of PoA and Statutory Declaration duly signed by the owner of the trade mark. The notarization or legalization of the documents is not required.
The Indonesian Government has taken all these measures in an attempt to adopt the international trade mark registration (Madrid Protocol). Further to these measures, the Indonesian Government is hoping to attract foreign investors in their country, hence boosting their economy. At the same time, the amended trade mark law has ensured that applicants in Indonesia do not violate the rules and regulations by increasing the punishments for counterfeiters, specifically for those with goods that cause damages to environment, health and/or death.

On top of these amendments, Indonesia has also increased the official fees for trade mark, patent, industrial design and copyright matters beginning of 10 November 2016. All new applications filed on and after 10 November 2016 will be subject to the new official fees.