Frequently Asked Questions

Before diving into the formal process of registering your trademark in Indonesia, it’s highly recommended to conduct a trademark search. This crucial step, although optional, plays a significant role in ensuring the success of your application.

What is a Trademark Search?

A trademark search involves examining the existing trademark database maintained by the Directorate General of Intellectual Property (DGIP). The goal is to identify any trademarks that are identical or similar to the one you intend to register.

Why is a Trademark Search Important?

1. Avoiding Rejections:
The most common reason for trademark application rejections is the existence of a similar or identical trademark already registered or applied for in the same class. A thorough search can help you avoid this pitfall, saving you time, effort, and money.

2. Assessing Risk:
Conducting a search allows you to assess the likelihood of conflicts with other trademarks. If similar marks are found, you can decide whether to proceed, modify your trademark, or select a new one. This proactive approach minimizes the risk of legal disputes down the road.

3. Strategic Decision-Making:
A search gives you a clear picture of the trademark landscape in your industry. This insight can guide you in making strategic decisions about branding, ensuring your trademark stands out and is legally protected.

 By: Khurnia Hudewi

• Database Search:
We access the DGIP’s trademark database, which contains records of all registered and pending trademarks in Indonesia. The search focuses on trademarks within the same class as your intended mark, but it can also include related classes if necessary.

• Criteria for Search:
The search is based on several criteria, including:
– Exact Matches: Identifying trademarks that are identical to yours.
– Phonetic Similarity: Checking for trademarks that sound similar.
– Visual Similarity: Looking for trademarks with similar visual elements or designs.
– Conceptual Similarity: Analysing trademarks with similar meanings or connotations.

• Search Results:
After the search, we provide you with a detailed report highlighting any potential conflicts. If conflicts are found, we’ll discuss your options, such as modifying your trademark, choosing a different mark, or proceeding with a trademark that carries some risk.

What are the Next Steps?

• No Conflicts:
If the search indicates no conflicts, you can confidently move forward with the trademark registration process.

• Potential Conflicts:
If similar trademarks are found, you can choose to:
– Modify your trademark to make it more distinctive.
– Proceed with the application, understanding the potential risks.
– Consider alternative trademarks that are less likely to face objections.

By: Khurnia Hudewi

The trademark registration process in Indonesia involves several key steps:

Search and Clearance:
Before filing, it’s advisable to conduct a trademark search to ensure your mark isn’t already registered by someone else. This helps avoid conflicts and rejections.

Filing the Application:
The application is filed with the Directorate General of Intellectual Property (DGIP). It must include your details, a clear representation of the trademark, a list of goods or services, and the class under which the trademark falls.

Formal Examination:
The DGIP conducts a formal examination to ensure the application meets all the necessary administrative requirements. This includes checking if the application is complete and accurate.

Publication:
If the application passes the formal examination, it is published in the Official Trademark Gazette for a period of 2 months. This allows the public to review the trademark and file any objections or oppositions.

Opposition Period:
During the 2-month publication period, any party can file an opposition if they believe your trademark conflicts with theirs. You will have the opportunity to respond to any oppositions filed.

Substantive Examination:
If no opposition is filed, or if any opposition is successfully resolved, the DGIP will conduct a substantive examination. This review ensures the trademark is distinctive, not misleading, and does not conflict with existing marks.

Approval and Registration:
If the trademark passes the substantive examination, it will be approved and registered. The DGIP will issue a certificate of registration, officially recognizing your trademark in Indonesia.

 By: Khurnia Hudewi

In Indonesia, the substantive examination of a trademark application is an essential phase in the trademark registration process. Governed by Law No. 20 of 2016 on Trademarks and Geographical Indications, this phase ensures that the applied trademark complies with Indonesian legal standards and does not infringe upon any prior rights.

Here’s an overview of the substantive examination process:

1. Timing
The substantive examination begins after the formality check (administrative review) has been completed. This step starts 30 days after the publication of the trademark application, assuming no opposition has been filed, or after the opposition is resolved.

The Directorate General of Intellectual Property (DGIP) has 150 working days (approximately 7 months) from the date the substantive examination starts to complete this review.

2. Scope of the Examination
During the substantive examination, the DGIP evaluates the application based on several legal criteria outlined in the Trademark Law. The main elements they check include:

– Distinctiveness: The mark must be distinctive and not descriptive of the goods or services. Generic or commonly used terms cannot be registered as trademarks.

– Similarity to Prior Trademarks: The trademark should not be confusingly similar to any previously registered trademarks for similar goods or services. The DGIP examines whether the mark could mislead consumers due to similarities with existing trademarks.

– Prohibited Marks: Certain marks are inherently unregistrable, such as:
– Marks that go against public order or morality.
– Marks that contain elements of national symbols, flags, or other emblems without proper authorization.
– Marks that are misleading regarding the nature, quality, or geographic origin of the goods or services.
– Non-compliance with Laws and Treaties: Marks that violate other laws or treaties Indonesia is a party to may also be rejected.

 By: Khurnia Hudewi

Possible Outcomes
There are three potential outcomes at the end of the substantive examination:

– Approval: If the trademark satisfies all legal criteria, it will be approved and proceed to registration, followed by issuance of the certificate.
– Rejection: If the DGIP finds that the trademark does not meet legal requirements, they will issue a rejection. The applicant will be notified in writing, with an explanation for the rejection.
– Partial Rejection: In cases where only part of the goods or services are rejected (e.g., the trademark is acceptable for some classes but not others), the DGIP may issue a partial rejection.

Appeal Process
If the application is rejected, the applicant can file an appeal to the Trademark Appeal Commission. This appeal must be submitted within 90 days of the rejection decision.

International Applications (Madrid Protocol)
Indonesia is a member of the Madrid Protocol, which means international applicants can designate

 By: Khurnia Hudewi

When registering a trademark in Indonesia, it is important to be aware that not all applications are automatically approved by the Directorate General of Intellectual Property (DGIP). Trademark refusals are quite common and are governed by Law No. 20 of 2016 on Marks and Geographical Indications. Understanding the reasons behind a refusal can help you navigate the process and take appropriate actions to protect your brand.

Common Reasons for Trademark Refusal

1. Similarity with Existing Registered Trademarks
One of the most frequent reasons for refusal is when the trademark is considered identical or confusingly similar to an existing registered trademark. This falls under Article 21(1)(a) of the trademark law. A trademark that closely resembles another in the same or related class can create confusion among consumers, leading to rejection of the application. This is why conducting a thorough trademark search before filing is highly recommended.

2. Lack of Distinctiveness or Descriptive Nature
According to Article 20, trademarks that are purely descriptive or lack distinctiveness are not eligible for registration. A trademark must be capable of distinguishing the goods or services of one entity from those of others. For example, terms that directly describe the product’s nature, quality, or intended use (such as “Fresh” for a juice brand) may be refused due to their descriptive nature. For a successful application, it’s important to create a unique and distinctive mark that does not rely solely on common descriptive words.

3. Conflict with Well-Known Trademarks
Even if a trademark is not registered in Indonesia, it may be refused if it conflicts with a well-known trademark under Article 21(1)(c). The law provides protection for internationally recognized brands, ensuring that no one can register a trademark that is identical or similar to a well-known mark. If your trademark resembles a well-known international brand, especially in the same industry, your application is likely to face rejection.

4. Public Morality and Public Order
Trademarks that are deemed offensive or violate public morality or public order can be refused under Article 21(1)(b). Marks that contain vulgar language, indecent imagery, or messages that are culturally or socially inappropriate are not permitted. It’s important to ensure that your trademark adheres to ethical standards and does not promote inappropriate content.

5. Deceptive or Misleading Trademarks
Trademarks that have the potential to deceive consumers about the nature, quality, or origin of goods or services will also be refused. This aligns with the principle that trademarks should not mislead the public, and is a critical consideration when designing your mark.

 By: Khurnia Hudewi

What to Do if Your Trademark is Refused

While a trademark refusal can be frustrating, it does not necessarily mark the end of your registration journey. You have several options to respond to a refusal:

1. Filing an Appeal
Trademark applicants in Indonesia have the right to file an appeal with the Trademark Appeal Commission within 3 months of the refusal notice. During the appeal, the applicant can present arguments or evidence to challenge the reasons for the rejection. The appeal process allows you to clarify or dispute any points made by the DGIP during the examination process.

2. Amending or Modifying the Trademark
In some cases, modifying the trademark can help overcome the grounds for refusal. For example, if the mark was rejected due to similarity with another trademark, small adjustments to the design or wording can make the mark more distinctive. Working with an intellectual property consultant can help you identify changes that would strengthen your application.

3. Reapplying with a New Trademark
If appealing or modifying the trademark is not feasible, you may consider filing a new application with a completely different trademark. This may be the best option if the current mark is too similar to an existing one or if it lacks the distinctiveness required by law.

 By: Khurnia Hudewi

 How to Prevent Trademark Refusal

The best way to avoid trademark refusal is by taking preventive steps early in the process:

– Conduct a Comprehensive Trademark Search: A trademark search can help you identify potential conflicts with existing marks before you submit your application. This allows you to make adjustments and avoid costly rejections later.

– Ensure the Trademark is Distinctive: Aim to create a unique, creative, and distinctive mark that sets your brand apart from competitors. Avoid common descriptive words or generic symbols.

– Work with IP Professionals: Consulting with a trademark attorney or intellectual property expert can help guide you through the application process, ensuring that your trademark is in full compliance with Indonesian trademark law.

Trademark refusal is a common hurdle in the registration process, but understanding the reasons behind it can help you prepare and take action. Whether you need to file an appeal, modify your trademark, or start over with a new application, the key is to approach the process strategically. By ensuring your trademark is distinctive, conducting thorough searches, and adhering to the law, you can improve your chances of securing registration and protecting your brand in Indonesia.

 By: Khurnia Hudewi

Trademark rights are vital to brand protection and fair competition. In Indonesia, the Trademark Law (Law No. 20 of 2016 on Marks and Geographical Indications) governs trademark registration, usage, and potential deletion. This article outlines the legal grounds and process for trademark deletion under Indonesian law, including relevant provisions for businesses to consider.

Understanding Trademark Deletion

Trademark deletion, also referred to as cancellation, is the process of removing a registered trademark from the official records held by the Directorate General of Intellectual Property (DGIP). Grounds for deletion include non-use, bad faith registration, or similarity with other trademarks that may confuse the public.

Legal Grounds for Deletion Under Indonesian Law

The Trademark Law provides several grounds for deletion, outlined in specific articles:

• Non-Use: Article 72 of the Trademark Law states that a trademark can be cancelled if it has not been used continuously for three years after registration. This provision encourages genuine and active use of trademarks in the market.
• Bad Faith Registration: Article 21(3) allows cancellation if a trademark is registered in bad faith. This includes registrations intended to block a competitor’s entry or mimic a well-known foreign brand without legitimate reason.
• Similarity and Likelihood of Confusion: Article 76 allows for the cancellation of marks that are misleading, deceptive, or confusingly similar to an existing mark. This applies particularly to marks that might mislead consumers due to their similarity to well-known trademarks.

Filing for Trademark Deletion

• Who Can File: According to Article 74, any third party with a legitimate interest may file for deletion, which typically includes competitors, businesses, or individuals who own a similar or prior trademark.
• Required Documents: Petitioners need to present substantial evidence, such as proof of non-use for three years, evidence of bad faith, or details showing a risk of consumer confusion.
• Process: To initiate deletion, a formal request is submitted to the DGIP. Under Article 73, the DGIP notifies the trademark holder, who is given the opportunity to respond. For non-use cases, the petitioner must provide proof of non-use during the specified period. For bad faith or similarity claims, clear evidence must support the claim.

 By: Khurnia Hudewi

Responding to Deletion Claims

Trademark holders can defend against deletion claims by providing evidence of legitimate use within the specified timeframe or by demonstrating good faith registration. Documentation, such as sales records, advertising materials, and distribution agreements, strengthens their position. In cases of non-use claims, trademark owners should prepare proof of use within the relevant period to counter deletion requests.

Outcomes of Deletion Proceedings

• Deletion Order: If the DGIP or court deems the deletion claim valid, the trademark is removed from the registry, allowing others to potentially register similar marks.
• Rejected Deletion Application: If evidence is deemed insufficient, the trademark remains in force, protecting the rights of the trademark owner.
• Appeals Process: Both the petitioner and the trademark holder have the right to appeal any deletion decision. Article 77 of the Trademark Law outlines the steps for administrative appeal within the DGIP or escalation to judicial review in Indonesia’s courts.

Practical Considerations for Businesses

• Maintain Records of Trademark Use: To avoid deletion due to non-use, companies should consistently document the use of their trademark in Indonesia.
• Monitor Competitors’ Trademark Filings: Regular monitoring allows businesses to address potential conflicts with newly registered marks promptly.
• Timely Renewal and Defence of Trademarks: Proactively renewing trademarks and addressing possible infringements early, as advised under Articles 28 and 35, are essential for protecting brand integrity in Indonesia.

Trademark deletion ensures that Indonesia’s registry includes only trademarks genuinely in use and legally registered. Familiarity with relevant provisions of the Trademark Law, such as Articles 21, 72, and 76, is crucial for businesses operating in Indonesia. Staying informed about legal grounds for deletion and maintaining proactive trademark strategies can help protect brands in the competitive Indonesian market.

For more detailed guidance on trademark deletion and other intellectual property matters in Indonesia, please contact us at rhp@rhp.co.id. As a trusted IP law firm in Indonesia, RH & Partners is here to support your business with comprehensive and reliable legal services.

 

 By: Khurnia Hudewi

In Indonesia, a registered trademark is not just a legal formality—it must be actively used in the marketplace. Failure to use a trademark for an extended period can lead to its cancellation under the Trademark Law (Law No. 20 of 2016 on Marks and Geographical Indications). This article explores the concept of trademark non-use, its legal implications, and steps businesses can take to mitigate risks.

1. What Constitutes Trademark Non-Use?

Trademark non-use occurs when a registered trademark is not used in commerce for a continuous period. According to Article 72 of the Trademark Law, a trademark can be canceled if it is not actively used for three consecutive years after its registration date. Non-use undermines the primary purpose of trademark registration, which is to distinguish goods or services in the marketplace.

Key Considerations for “Use”:

• Commercial Activity: The mark must appear on goods, packaging, advertisements, or other promotional materials.
• Geographical Scope: Use must occur within Indonesia.
• Substantial Use: The use must be genuine, not token or symbolic, solely to maintain the trademark registration.

2. Legal Grounds for Cancellation Due to Non-Use

Under Article 74, third parties with a legitimate interest—such as competitors or individuals seeking to use the mark—can file for the cancellation of a trademark based on non-use. The petitioner must prove that the trademark has not been used in Indonesia for three consecutive years.

3. Defending Against Non-Use Claims

Trademark owners facing cancellation claims must demonstrate evidence of use within the three-year period. Some examples of valid proof include:

• Sales Records: Invoices or contracts showing transactions involving goods or services under the mark.
• Advertising Materials: Marketing campaigns, digital promotions, or traditional media advertisements.
• Distribution Agreements: Partnerships with retailers or distributors to deliver goods bearing the trademark.

If non-use occurred due to valid reasons, such as government restrictions or force majeure events, the owner may argue this as a defense.

4. Risks of Non-Use for Businesses

Failure to use a trademark puts businesses at risk of losing exclusive rights. Cancellation due to non-use can:

• Open the door for competitors to register or use the mark.
• Damage brand reputation and market position.
• Result in lost investments made during the trademark registration process.

5. Practical Steps to Avoid Trademark Non-Use

Businesses can adopt the following strategies to ensure compliance with Indonesian trademark law:

• Actively Use Registered Trademarks: Ensure that your trademark is visible in advertisements, on products, and during promotions.
• Maintain Detailed Records: Keep organized documentation of trademark usage, including dates and evidence of commercial activities.
• Monitor Market Trends: Regularly review the relevance and usage of your trademarks to adapt to market needs.
• Seek Legal Advice: Consult with an IP law firm to assess trademark portfolios and ensure all marks are actively used and compliant with local laws.

6. Filing for Non-Use Cancellation

For businesses impacted by unused trademarks owned by competitors, filing a non-use cancellation request can be a strategic move. Petitioners must provide evidence of non-use and file their request with the Directorate General of Intellectual Property (DGIP).

Trademark non-use in Indonesia is a critical issue that can affect brand protection and market presence. Businesses must actively use their trademarks and document their use to prevent cancellation. Conversely, filing a non-use cancellation request can be an effective strategy to clear unused marks and pave the way for new registrations.

For expert assistance on trademark non-use and cancellation processes in Indonesia, contact RH & Partners at rhp@rhp.co.id. Our experienced team provides trusted legal support to protect and enforce your intellectual property rights. 

 By: Khurnia Hudewi

In Indonesia, trademarks serve as a crucial tool for protecting a brand’s identity and distinguishing goods or services in the market. However, it is not uncommon for trademark owners to renew marks that are no longer in active use, whether for strategic reasons or to maintain ownership. While the renewal of non-use trademarks is legally permissible under certain conditions, it is subject to specific considerations under Law No. 20 of 2016 on Marks and Geographical Indications (Trademark Law).

Trademark Validity and Renewal

A trademark registration in Indonesia is valid for 10 years from the filing date and can be renewed indefinitely for additional 10-year periods.Trademark owners may renew their marks regardless of whether the trademark is actively used, provided they comply with the renewal process.

Is Non-Use Permissible?

The Trademark Law recognizes the importance of using registered marks in commerce. Under Article74, a trademark can besubject to cancellation if it has not been used for 3 consecutive years without valid reasons. However, this cancellation does not occur automatically; it must be initiated by a third party through a legal process.

Potential Risks of Renewing a Non-Use Trademark

While renewing a non-use trademark may seem like a straight forward way to maintain rights, there are risks and implications to consider:

1. Vulnerability to Cancellation: Third parties can file a cancellation law suit on the grounds of non-use. If successful, the trademark will be removed from the register, even if recently renewed.
2. Increased Costs: Continuously renewing a non-use trademark without deriving commercial value may lead to unnecessary financial burdens.
3. Market Perception: A non-use trademark may dilute the owner’s portfolio, reducing its perceived strength or value in the market.

Strategic Reasons for Renewing Non-Use Trademarks

Despite the risks, some trademark owners choose to renew non-use trademarks for strategic purposes, such as:

• Future Business Expansion: Retaining rights to a mark for potential future use.
• Preventing Competitors: Blocking competitors from registering or using a similar mark.
• Maintaining Brand Portfolio: Preserving a legacy mark as part of a broader brand strategy.

How to Protect Non-Use Trademarks

If you decide to renew a non-use trademark, consider the following steps to mitigate risks:

1. Document Reasons for Non-Use: Maintain evidence of valid reasons for non-use, such as force majeure events or strategic business decisions, to defend against cancellation.
2. Monitor the Market: Keep track of third-party activities to preempt potential cancellation actions.
3. Evaluate Portfolio Regularly: Periodically assess whether retaining non-use marks aligns with your business strategy.

Renewing a non-use trademark in Indonesia is a legally permissible but strategically delicate decision. While it allows you to retain ownership rights, it comes with potential risks, including cancellation by third parties. Trademark owners should carefully weigh the costs and benefits, considering their long-term business objectives. For tailored advice and assistance with renewals, consult an intellectual property professional to ensure your trademarks remain an asset rather than a liability.

 By: Khurnia Hudewi

In the competitive world of business, a distinctive trademark is essential for standing out in the marketplace. In Indonesia, as in many other countries, the distinctiveness of a trademark is a critical factor in its registration and protection.

This article delves into the distinctiveness requirement for trademarks in Indonesia, exploring the types of distinctive marks, the examination process, and the associated legal framework.

What is Distinctiveness?

Distinctiveness refers to a trademark’s ability to distinguish the goods or services of one enterprise from those of others. A distinctive trademark must be unique, recognizable, and not merely descriptive or generic. This quality is essential for a trademark to fulfill its primary function—identifying and differentiating the source of goods or services.

Types of Distinctive Marks

1. Invented or Coined Words: These are words created specifically for the trademark and have no prior meaning, such as “Kodak.”
2. Arbitrary Marks: Common words used in an unrelated context, like “Apple” for computers.
3. Suggestive Marks: Marks that hint at the nature or quality of the goods/services but require imagination to understand the connection, such as “Jaguar” for cars.
4. Fanciful or Whimsical Marks: Highly distinctive, often made-up names, like “Xerox,” that are inherently unique.

Non-Distinctive Marks

Generic Terms: Common terms for the goods/services (e.g., “Computer” for computer goods).

1. Descriptive Marks: Directly describe a characteristic, quality, function, or feature of the goods/services (e.g., “Fast Delivery”).
2. Common Phrases or Symbols: Phrases or symbols that are widely used in trade.

Acquired Distinctiveness (Secondary Meaning)

A mark that is initially non-distinctive can acquire distinctiveness through extensive and continuous use in the market. This process,known as acquiring a secondary meaning, occurs when the public begins to associate the non-distinctive mark specifically with the applicant’s goods or services.

Examination Process

The Directorate General of Intellectual Property (DGIP) in Indonesia reviews trademark applications to assess distinctiveness. The examination process includes:

1. Checking if the mark is identical or confusingly similar to existing registered trademarks.
2. Ensuring the mark meets the criteria for distinctiveness.
3. Marks deemed non-distinctive, generic, descriptive, or similar to existing marks may be refused registration.

Refusal and Opposition

1. Refusal: Marks that do not meet the distinctiveness requirement or may cause consumer confusion are likely to be refused registration.
2. Opposition: Third parties can oppose the registration of a trademark within a specified period after the mark is published in the Trademark Journal if they believe it conflicts with their own rights.

Legal Protection and Enforcement

Once registered, a trademark grants the owner exclusive rights to use the mark for the designated goods or services. This legal protection allows the owner to take action against unauthorized use or infringement, ensuring robust protection for their brand.

Understanding the distinctiveness requirement is crucial for successfully registering and protecting a trademark in Indonesia. A distinctive trademark not only helps in standing out in the competitive market but also ensures legal protection against infringement. Businesses must carefully consider the uniqueness and recognizability of their trademarks to navigate the registration process effectively and secure their brand’s future.

I hope this article helps clarify the distinctiveness requirement in Indonesian trademark law. If you need more information or have specific questions, feel free to ask!

 By: Khurnia Hudewi

A well-known mark (or merek terkenal) holds a significant place in trademark law, especially in Indonesia. Under Law No. 20 of 2016 on Trademarks and Geographical Indications, well-known marks enjoy enhanced protection compared to regular trademarks. This article explores what constitutes a well-known mark in Indonesia, the legal framework for their protection, and practical implications for trademark owners.

Indonesian law does not explicitly define a well-known mark but recognizes it as a mark that has gained widespread recognition among the public or relevant business circles. Factors to determine whether a trademark qualifies as a well-known mark include:

The Reputation of the Mark: How widely known the mark is in Indonesia and internationally.

1. Duration and Extent of Use: The length of time the mark has been used and the extent of its usage in Indonesia or abroad.
2. Extent of Promotion: The intensity and scope of promotional efforts for the mark.
3. Market Share and Revenue: The market share achieved by the mark, along with financial success.
4. Registrations in Other Jurisdictions: The registration of the mark in multiple countries may also serve as evidence of its well-known status.

Well-known marks in Indonesia are afforded special protection under Article 21(1)(b) of the Trademark Law. This provision allows the rejection of trademark applications that are identical or similar to a well-known mark, even if the mark has not been registered in Indonesia.

The protection of well-known marks is not limited to identical goods or services. Under Article 21(3), well-known marks are protected against unauthorized use for dissimilar goods or services if such use could harm the reputation or distinctiveness of the well-known mark.

To establish that a trademark is well-known, the Directorate General of Intellectual Property (DGIP) and Indonesian courts often refer to:

• Evidence of registration in other jurisdictions.
• Use and promotion of the trademark.
• Surveys or market research demonstrating consumer recognition.
• Recognition in prior legal decisions, whether domestic or international.

Despite the legal provisions, enforcing well-known mark rights in Indonesia can be challenging:

1. Proving Reputation: Establishing the “well-known” status of a mark requires substantial evidence, which can be costly and time-consuming.
2. Bad Faith Applications: Trademark squatting remains an issue in Indonesia, where parties register well-known international marks with no intention of using them.
3. Lack of a Centralized Register: Unlike some jurisdictions, Indonesia does not maintain a specific register for well-known marks, making the recognition process case-dependent.

Several cases illustrate the application of well-known mark protection in Indonesia:

• Starbucks v. A Local Café: Starbucks successfully defended its mark when a local café attempted to register a logo similar to its mermaid logo.
• Gucci v. Local Manufacturer: Gucci established its well-known status and prevented the use of its mark on unrelated products such as household goods.

To secure protection for well-known marks in Indonesia:

1. Register the Mark: Although registration is not mandatory for protection, it is highly recommended to strengthen claims.
2. Monitor the Market: Conduct regular market checks to identify infringing or unauthorized uses of the mark.
3. Act Against Infringers: File oppositions, cancellations, or lawsuits against parties misusing the mark.

Well-known marks are a critical element of trademark law in Indonesia, offering robust protection against infringement. However, trademark owners must proactively establish and defend their mark’s reputation through evidence and legal action. By understanding the intricacies of Indonesian trademark law, businesses can effectively safeguard their valuable intellectual property in the region.

By: Khurnia Hudewi

In Indonesia, trademarks are a cornerstone of intellectual property(IP) rights, protecting the identity and reputation of businesses.However, sometimes trademark applications are filed that could harm your existing rights or conflict with your business interests. In such cases, the Indonesian trademark system provides an opposition mechanism, enabling third parties to challenge a published trademark application before it is officially registered.

The opposition process in Indonesia is governed by Law No. 20 of 2016on Marks and Geographical Indications. Under this law, the Directorate General of Intellectual Property (DGIP) publishes trademark applications in the Official Gazette to allow third parties to review and potentially challenge them.

Grounds for Opposition

Anyone may oppose a trademark application during the publication period on several grounds, including:

1. Similarity to Existing Trademarks: The application may conflict with a previously registered or well-known trademark.
2. Bad Faith: The applicant may have acted dishonestly, for example, by copying a trademark without authorization.
3. Generic or Descriptive Nature: The mark might lack distinctiveness or consist solely of generic terms.
4. Violation of Public Morality or Laws: The trademark may include prohibited elements or offend public norms.

Opposition Procedure

1. Publication of the Trademark Application.

Trademark applications are published in the Official Gazette for a period of two months. This is the window during which oppositions can be filed.

2. Filing the Opposition

To file an opposition, you must submit a written objection to the DGIP. The opposition should include:

• Details of the Opponent: Name, address, and legal representative if applicable.
• Grounds for Opposition: A detailed explanation of why the application should be rejected, supported by evidence.
• Supporting Documents: Proof of prior trademark registration, evidence of use, or other relevant documents.

The submission must be made in Bahasa Indonesia.

3. Applicant’s Response

Once the opposition is filed, the DGIP notifies the trademark applicant, who has two months to respond. The response should address the opposition’s claims and provide evidence supporting the application.

4. Examination and Decision

The DGIP examines both the opposition and the applicant’s response before making a decision. If the opposition is upheld, the application will be rejected. If not, the application proceeds to registration.

Strategic Considerations

1. Monitor Publications Regularly Keeping track of published applications is critical to identify potentially conflicting marks.You can subscribe to the Official Gazette or hire a trademark watch service to monitor new applications.

2. Prepare Strong Evidence

The success of an opposition often hinges on the quality of evidence presented. Collecting comprehensive documentation, such as proof of use or prior registration, is essential.

3. Seek Legal Assistance

Navigating the opposition process can be complex. Engaging an IP lawyer ensures that your submission complies with procedural requirements and maximizes your chances of success.

4. Consider Alternative Actions

If the opposition period has passed, or if the opposition is unsuccessful, you may still challenge the trademark through cancellation proceedings after registration.

Opposing a trademark application in Indonesia is a proactive way to protect your business’s identity and assets. By understanding the opposition process and acting promptly during the publication period,you can prevent potential conflicts and safeguard your IP rights.

If you need assistance with a trademark opposition or other intellectual property matters, consult with our IP expert at RH &Partners to ensures your rights are protected effectively and in accordance with Indonesian law.

By: Khurnia Hudewi

The legal framework governing trademarks in Indonesia is primarily regulated by Law No. 20 of 2016 concerning Trademarks and Geographical Indications (“Trademark Law”). Trademark deletion is a vital mechanism that ensures the integrity of the trademark registry by removing marks that no longer meet legal requirements or are no longer in use. This article explores the grounds, procedures, and legal implications of trademark deletion under Indonesian law.

Grounds for Trademark Deletion

Under Article 74 of the Trademark Law, a registered trademark may be deleted from the General Register of Trademarks based on specific grounds:

1. Non-Use for Three Consecutive Years

A trademark can be deleted if it has not been used in trade for three consecutive years. The non-use must be without valid reasons, such as economic crises, natural disasters, or other justifiable circumstances.

2. Violation of Legal Provisions

A trademark may also be deleted if it is proven to:

– Conflict with public order, morality, or religion.

– Be misleading regarding the nature, quality, or origin of goods/services.

– Have been registered in bad faith.

Who Can File a Deletion Request?

Trademark deletion can be initiated by:

– Third Parties: Any interested party may file a request for deletion.

– The Trademark Holder: The owner can voluntarily request deletion if they no longer wish to maintain the trademark.

– The Directorate General of Intellectual Property (DGIP): DGIP may initiate deletion for trademarks that violate the law or are contrary to public interest.

Procedures for Trademark Deletion

1. Filing a Deletion Request

A request for deletion must be submitted to DGIP, accompanied by evidence supporting the claim, such as proof of non-use or evidence of bad faith.

2. Examination by DGIP

DGIP will review the request and may require a hearing to gather further evidence or statements from the trademark holder and the requesting party.

3. Decision

Based on the examination, DGIP will issue a decision to either approve or reject the deletion request.

4. Appeal Process

If a party disagrees with DGIP’s decision, they may file an appeal with the Commercial Court within three months from the date of the decision.

Legal Implications of Trademark Deletion

Once a trademark is deleted, it loses all legal protection under the Trademark Law. The former owner cannot claim exclusive rights over the mark, and it becomes available for registration by other parties.

Preventing Trademark Deletion

To avoid deletion, trademark holders should:

– Consistently Use the Trademark: Regular use of the mark in commerce demonstrates its active role in the market.

– Maintain Proper Documentation: Keep records of use, such as invoices, advertisements, and other commercial activities.

– Monitor and Defend the Trademark: Actively address disputes or potential conflicts that may lead to deletion requests.

Trademark deletion is a critical aspect of trademark law enforcement in Indonesia. It ensures that the trademark registry remains accurate and fair, protecting both trademark owners and the public. To maintain their rights, trademark holders must comply with usage requirements and address any challenges promptly. For businesses and individuals navigating trademark issues, seeking professional legal advice is essential to safeguard their intellectual property. RH & Partners ready to assist you accordingly.

By: Khurnia Hudewi

In Indonesia, intellectual property rights (IPR) are governed by specific laws that regulate the protection of trademarks and copyrights. Despite their distinct purposes, overlaps between these two types of protection often lead to misconceptions. This article explores how trademark and copyright laws intersect under Indonesian law, highlighting key issues and common misunderstandings.

Legal Framework
Trademark: Governed by Law No. 20 of 2016 on Trademarks and Geographical Indications
Copyright: Regulated under Law No. 28 of 2014 on Copyright.
Overlap Between Trademark and Copyright

1. Logos:

Trademark Protection:
Under Article 1(1) of the Trademark Law, a trademark includes any sign in the form of words, names, letters, numbers, color arrangements, or a combination thereof used in trade to distinguish goods or services.

Copyright Protection:
According to Article 40(1)(j) of the Copyright Law, logos can qualify as artistic works, provided they are original.

Example: A creatively designed logo, such as a unique illustration or typography, is protected as an artistic work under copyright. If the same logo is used to identify a business or product, it can also be registered as a trademark.

2. Trade Dress:

Trademark:
The unique appearance of product packaging or the layout of a store can be protected as a trade dress under Article 1(1) of the Trademark Law.

Copyright:
If the design of the packaging includes original artistic elements, it may also be protected under Article 40(1)(k) of the Copyright Law.

3. Characters and Mascots:

Trademark:
Fictional characters or mascots used in branding can be registered as trademarks if they function as brand identifiers.

Copyright:
The character design and its depiction in media are protected as works of art or literature under Article 40(1)(e) of the Copyright Law.

Key Misconceptions

1. Copyright Automatically Grants Trademark Protection:
Many assume that registering a logo or design under copyright law automatically confers trademark rights. However, trademark registration is a separate process handled by the Directorate General of Intellectual Property (DGIP).

2. All Trademarks Are Copyrightable:
Not all trademarks qualify for copyright protection. For example, simple text-based trademarks or generic symbols may not meet the originality requirement under Article 40 of the Copyright Law.

3. Trademarks Protect Creative Aspects:
Trademarks do not protect the artistic or creative elements of a design. Their scope is limited to distinguishing goods or services in commerce. Copyright, on the other hand, specifically protects creative expression.

4. Indefinite Protection for Both:
Trademark protection is renewable every 10 years under Article 35 of the Trademark Law, whereas copyright has a fixed term of protection:
– Life of the creator + 70 years for most works (Article 58 of the Copyright Law).
– 50 years for works of applied art (Article 59 of the Copyright Law).

Best Practices for Navigating Overlaps

1. Dual Registration:
If a logo or design serves both as a creative work and a brand identifier, it is advisable to register it under both copyright and trademark laws to maximize protection.

2. Understand Limitations:
Businesses should clearly differentiate between the scope of copyright and trademark protections to avoid over-reliance on one form of IP.

Under Indonesian law, trademarks and copyrights offer distinct but occasionally overlapping protections. Logos, packaging, and characters are common examples of assets eligible for both protections. However, businesses and creators must understand their differences to avoid misconceptions. By leveraging both systems effectively, you can secure comprehensive legal protection for your intellectual property.

Misunderstanding the laws can lead to disputes or gaps in protection. Contact us to ensures compliance with Indonesian IP laws and strengthens enforcement strategies.

By: Khurnia Hudewi

A trademark license is a legal agreement that allows the owner of a trademark (licensor) to permit another party (licensee) to use the trademark under specific terms and conditions. In Indonesia, trademark licensing is regulated under Law No. 20 of 2016 on Trademarks and Geographical Indications(Trademark Law). This article outlines the key aspects of trademark licensing in Indonesia.

1. Legal Basis

Trademark licensing in Indonesia is governed by:

• Article 42 to Article 45 of the Trademark Law
• Regulation of the Minister of Law and Human Rights No. 67 of 2016 on the Implementation of the Trademark Law

2. Essential Requirements for a Trademark License

1. Written Agreement
   A trademark license must be formalized through a written agreement. Oral agreements are not recognized under Indonesian law.
2. Goodwill Protection
   Licensing must not mislead the public regarding the quality or origin of the goods or services associated with the trademark.
3. Territorial Scope
   The agreement should specify the geographic area where the license applies, whether nationwide or restricted to specific regions.
4. Non-Exclusive or Exclusive License
   The licensor can grant an exclusive license (allowing only one licensee) or a non-exclusive license (allowing multiple licensees).

3. Registration of the License Agreement

In Indonesia, a trademark license agreement must be recorded with the Directorate General of Intellectual Property (DGIP) to be enforceable against third parties. Unregistered licenses may still bind the parties but lack legal standing in disputes involving third parties.

Key points about registration:

The application for registration must include:

• A copy of the license agreement.
• Evidence of the trademark registration.
• An official application form.

Registration ensures the license agreement is valid for public record and prevents unauthorized use.

4. Duration of the License

The license period can be stipulated in the agreement but cannot exceed the validity of the trademark registration (10 years, renewable). The agreement must also consider the potential renewal of the trademark.

5. Rights and Obligations of the Parties

Licensor’s Rights and Obligations:

• Retain ownership of the trademark.
• Ensure that the trademark is used properly and does not degrade in quality or reputation.

Licensee’s Rights and Obligations:

• Use the trademark as specified in the agreement.
• Adhere to quality control measures imposed by the licensor.

6. Termination of the License

The license agreement can be terminated under the following conditions:

• Expiry of the agreed term.
• Mutual consent.
• Breach of contract by either party.
• Revocation or expiration of the trademark.

Upon termination, the licensee must cease using the trademark unless otherwise agreed.

7. Dispute Resolution

Trademark license disputes are generally resolved through:

• Negotiation or mediation.
• Arbitration (if stipulated in the agreement).
• Litigation in Indonesian courts.

8. Importance of Licensing Compliance

Trademark licensing offers economic benefits to both licensors and licensees. However, failure to comply with Indonesian trademark laws, especially in terms of registration and quality control, may lead to unenforceability or reputational damage.

Trademark licensing is an effective way to commercialize intellectual property in Indonesia, but it requires strict adherence to legal provisions. Businesses should ensure that their licensing agreements are properly drafted, registered, and executed to safeguard their rights and avoid disputes. Contact us at khudewi@rhp.co.id for further information regarding trademark Licensing in Indonesia. 

By: Khurnia Hudewi

Dear Valued Clients,

As your trusted Indonesian Intellectual Property (IP) Firm, We are writing to inform you about recent developments in Indonesia’s trademark regulations that may impact your business operations or intellectual property strategy. These changes reflect the evolving legal landscape and aim to provide greater protection for trademark owners, particularly small and medium-sized enterprises (SMEs).

Extension of Trademark Non-Use Period

The Indonesian Constitutional Court has recently extended the trademark non-use period from three years to five years. This adjustment, effective since July 2024, allows trademark owners more time to utilize their marks in commerce without risking cancellation due to non-use. The decision was driven by the need to support SMEs, which often face challenges such as economic crises or force majeure conditions that hinder their ability to use registered trademarks effectively.

This change aligns Indonesia’s trademark laws with international standards, such as the Trade-Related Aspects of Intellectual Property Rights (TRIPS), and provides a fairer environment for businesses recovering from external disruptions. However, it also means that proving non-use for cancellation now requires evidence spanning five consecutive years instead of three.

Implications for Trademark Owners

• For SMEs: This extension offers additional protection and flexibility, especially for businesses recovering from economic or operational setbacks.

• For Larger Enterprises: Trademark owners should remain vigilant about monitoring potential misuse or squatting during the extended non-use period.

• For All Owners: It is crucial to maintain documentation of trademark usage or valid reasons for non-use (e.g., force majeure) to safeguard your rights.

Trademark Renewal Reminder

A registered trademark in Indonesia is protected for 10 years from its filing date and can be renewed every 10 years. Applications for renewal should ideally be submitted six months before expiration. Late renewals are allowed within a six-month grace period but incur additional fees. Failure to renew within this timeframe may result in the loss of trademark rights, allowing third parties to register the mark independently.

Next Steps

To adapt to these changes:

1. Review Your Trademark Portfolio: Ensure all trademarks are actively used or have  documented reasons for non-use.

2. Monitor Published Trademarks: Stay alert during the publication phase to prevent bad-faith registrations.

3. Plan Renewals Proactively: Avoid delays in renewing trademarks to maintain uninterrupted protection.

If you have questions about these updates or need assistance with trademark management, please do not hesitate to contact us. We are here to help you navigate these changes and optimize your IP strategy. 

[RH & Partners/Khudewi]

 By: Khurnia Hudewi

Dear Clients,

Here is a brief but essential update on recent developments in trademark law and practice in Indonesia that may impact your brand protection strategy.

1. New Trademark Application Features on DGIP Online System

As of Q2 2025, the Directorate General of Intellectual Property (DGIP) has rolled out new features for trademark filing:

• Pre-filled Nice Classification Suggestions: To minimize class misclassification errors.
• Real-Time Application Status Tracker: Allowing users to monitor each step from filing to publication.
• E-Filing Portal Performance has been significantly improved with reduced downtime and faster upload capability.

Practical tip: Make sure your class specification is aligned with the new database suggestions to avoid formal objections.

 

2. Tighter Examination Timeline

 DGIP has committed to a stricter 9-month timeline (from filing to final decision) in line with the ASEAN Trademark Action Plan. This applies to both local and international applications via the Madrid Protocol.

 Note: Early and complete documentation submission is now more important than ever.

 

3. Publication & Opposition Alert

• Trademark applications are now published within 15 working days after formality check.
• Opposition window remains 2 months, but the notification system for published marks is now integrated via email alerts for applicants and opponents.

We recommend setting up an active watch service for clients with brand portfolios in Indonesia.

 

4. Use Requirements & Non-Use Cancellation Risk

 DGIP has begun random audits of non-used trademarks after 3 years of registration. If a mark is unused without valid reason, third parties may initiate cancellation under Article 74 of the Trademark Law.

Action Point: Ensure commercial use of your registered marks in Indonesia is documented and preserved.

 

5. Official Fee Structure Remains Stable

 No increase in official fees as of June 2025. However, DGIP has hinted at a restructuring of renewal and opposition fees in the next fiscal year.

 Need assistance?

 Our IP team at RH & Partners is ready to help with:

• Pre-filing clearance search
• Application filing & renewal
• Trademark watch & enforcement
• Madrid Protocol filings
• Opposition & cancellation proceedings

Please reach out to us for any trademark matter in Indonesia.

 Warm regards,

 RH & Partners

Khurnia Hudewi

Managing Partner

[RH & Partners/Khudewi]

 By: Khurnia Hudewi

As Indonesia continues to align its trademark system with international standards, the pre-filed classification of goods and/or services has become a central feature in the trademark application process.

Indonesia’s accession to the Nice Agreement marks a significant milestone, bringing the country’s classification system for goods and services in line with global practices. The Nice Classification (NCL), an internationally recognized system, is now the reference for trademark filings in Indonesia. This harmonization facilitates not only domestic filings but also international registrations under the Madrid Protocol, supporting Indonesian brands in expanding their global reach.

 Pre-Filed Classification in Practice

The Directorate General of Intellectual Property (DGIP) requires applicants to select goods and/or services from a pre-approved, online list based on the Nice Classification. This system is intended to streamline the application process and reduce ambiguity. However, it introduces several practical considerations:

• Non-Editable List: The wording of goods and services in the DGIP’s online system is fixed and cannot be edited by the applicant. This means that applicants must choose from the available options without modification.
• Frequent Updates: The DGIP periodically updates the pre-approved list, but there is no fixed schedule for these updates. Sometimes, goods or services are removed from the list without prior notice, which can affect pending or planned applications.
• Difficulty Adding New Terms: Requesting the addition of new goods or services to the list is challenging and rarely granted, especially if there is an existing similar term[4].
• Irrevocability After Payment: Once the government fee is paid, the chosen goods/services cannot be amended, even if the application has not yet been formally submitted.

Given these constraints, applicants and their must:

• Plan Ahead: Carefully review the current pre-approved list before preparing an application. Early selection is crucial, as changes to the list can occur at any time.
• Be Flexible: Where the precise term is unavailable, select the closest appropriate term to ensure coverage. However, be aware that overly broad or unrelated terms may lead to objections during examination.
• Coordinate with DGIP: In cases where the desired goods or services are not listed, proactive coordination with the DGIP is necessary. Experienced IP consultants play a vital role in navigating these discussions and ensuring the best possible coverage for clients.
• Monitor Updates: Stay informed about updates to the classification list and DGIP’s e-filing system to avoid surprises that could delay or complicate filings.

While the pre-filed classification system brings Indonesia closer to international best practices, it also presents practical challenges:

• Inconsistencies in Implementation: Despite ratification of the Nice Agreement, the availability of certain goods and services in the DGIP’s system is not always consistent, requiring vigilance and sometimes creative solutions from IP consultants.
• International Filings: For Madrid Protocol applications, discrepancies can arise between the international list of goods/services and the DGIP’s pre-approved list, necessitating careful review and, at times, direct communication with the office.

The pre-filed classification of goods and/or services is now a defining feature of trademark applications in Indonesia. While it offers greater clarity and harmonization with international standards, it demands a proactive and strategic approach from applicants and their IP advisors. At RH & Partners, we continue to monitor regulatory developments and leverage our expertise to guide clients through these evolving requirements, ensuring robust and effective trademark protection in Indonesia and beyond. [RH & Partners/ Khudewi]

For further updates and tailored advice on trademark filings in Indonesia, contact the RH & Partners IP team at rhp@rhp.co.id or khudewi@rho.co.id

 By: Khurnia Hudewi

Mobile Phone: +62 878 8651 1479

E-mail : khudewi@rhp.co.id

How Indonesia is Adapting to Global Trademark Trends

The world of intellectual property is evolving rapidly, especially in the area of trademarks. With the rise of digital brands, the use of artificial intelligence (AI) in trademark searches, and increasing cross-border infringement cases, Indonesia is actively updating its trademark protection system to align with international best practices and the needs of businesses, especially SMEs.

Regulatory Update: Extended Non-Use Period for Trademarks in Indonesia

A significant recent change in Indonesian trademark law is the extension of the non-use period from three to five years. This Constitutional Court decision, effective as of July 2024, gives trademark owners more time to use their marks in commerce before risking cancellation for non-use. This move supports SMEs, who often face economic challenges or force majeure events, and brings Indonesia in line with international standards such as TRIPS.

Implications for Trademark Owners:

• Greater flexibility for businesses, especially SMEs, to maintain trademark rights even when facing operational obstacles.
• Cancellation claims for non-use now require proof of non-use for five consecutive years, instead of three.

Trademark Registration and Protection in Indonesia

Indonesia applies a first-to-file system, meaning the first party to register a trademark obtains exclusive rights. The registration process includes:

• Search and Clearance: Ensuring the trademark is not already registered to avoid conflicts.
• Filing with DGIP: Submitting applicant details, trademark representation, a list of goods/services, and class information.
• Formal and Substantive Examination:Ensuring the mark is not misleading, unlawful, or lacking distinctiveness.
• Publication and Opposition Period: A two-month window for third parties to file objections if there is a potential rights conflict.
• Issuance of Certificate: Upon approval, the trademark certificate is valid for 10 years and can be renewed.

Harmonization and Trademark Enforcement

• International Collaboration: Trademark offices worldwide are enhancing cooperation and harmonizing regulations to facilitate cross-border registrations.
• AI in Trademark Searches: AI technology is speeding up and expanding the scope of trademark conflict searches, reducing the risk of disputes.
• Enforcement and Disputes: High-profile cases, such as Nintendo’s litigation in the US and non-use cancellations in the EU, highlight the importance of genuine use and active protection of trademarks.

Practical Strategies for Businesses in Indonesia

• Document Trademark Use: Keep evidence such as invoices, promotional materials, and distribution agreements to defend against potential non-use cancellation claims.
• Monitor Competitor Filings: Regular monitoring helps prevent conflicts and infringement.
• Proactively Renew and Protect Trademark Rights: Renew registrations on time and address potential infringements promptly to maintain brand integrity.

Indonesia’s trademark law reforms, particularly the extended non-use period, are adaptive steps supporting businesses amid global challenges. With increasing international harmonization, digitalization, and stricter enforcement, Indonesian trademark owners are encouraged to update their protection strategies and seek professional legal support.[RH & Partners/Khudewi]

For further consultation on trademark protection or other intellectual property matters, contact the expert team at RH & Partners at rhp@rhp.co.id and Khudewi@rhp.co.id. We are ready to help your business navigate the new era of trademark protection.

By: Khurnia Hudewi

Mobile Phone: +62 878 8651 1479

E-mail : khudewi@rhp.co.id

In Indonesia, trademark registration involves several procedural stages, one of which is the substantive examination. This stage is crucial because it determines whether a trademark can be lawfully registered based on legal grounds and existing rights. The process is governed by Law No. 20 of 2016 on Marks and Geographical Indications, particularly Articles 23 to 27, as well as relevant implementing regulations.

This article explores in detail the nature, scope, timeline, and grounds of rejection during the substantive examination phase.

What is Substantive Examination?

Substantive examination is a legal review conducted by the Directorate General of Intellectual Property (DGIP) to assess whether the trademark application meets substantive requirements for registration. It follows the completion of the formal examination and the publication stage (three-month opposition period).

The aim is to ensure that the applied mark:

▪ Is distinctive,

▪ Does not conflict with prior registered marks,

▪ Does not violate public order, morality, or existing laws,

▪ Does not fall within the grounds of absolute or relative refusal.

Legal Basis

The substantive examination is regulated under:

▪ Article 23 – Article 27 of Law No. 20 of 2016.

▪ Article 21 (Grounds for refusal).

▪ Ministry of Law and Human Rights Regulation No. 12 of 2021 regarding the Procedure of Trademark Registration.

Timeline of Substantive Examination

The examination begins after the 3-month publication period, assuming no oppositions are filed, or once any opposition has been resolved.

Duration:
The DGIP must complete the examination within 150 days (5 months) from the end of the publication period (Article 23(3)).

Examination Criteria

The DGIP examiner reviews the mark based on two key categories:

A. Absolute Grounds (Article 20 & 21(1))

These relate to the inherent registrability of the mark itself. A mark will be rejected if it:

▪ Lacks distinctiveness, such as being descriptive, generic, or common trade terms.

▪ Contains elements that:

▪ Contradict morality, religion, public order, or decency.

▪ Are misleading or deceptive (e.g., nature, quality, origin).

▪ Use symbols of the state, international organizations, or red cross/emblem without authorization.

▪ Are identical or similar to geographical indications or traditional cultural expressions already protected.

B. Relative Grounds (Article 21(1)–(3))

These consider conflicts with existing third-party rights. A trademark is rejected if:

▪ It is similar in principle or entirety to:

▪ A registered mark or prior pending application for similar goods/services.

▪ A well-known mark, even if not registered in Indonesia, particularly for the same kind of goods/services.

▪ It duplicates the name of a famous person, company name, or photograph without consent.

▪ It is filed in bad faith (e.g., copycat applications by agents or distributors).

Examiner’s Decision

After reviewing the application, the examiner may issue:

▪ Acceptance: If the trademark complies with the substantive requirements, it proceeds to registration and the issuance of a certificate of registration.

▪ Rejection: If grounds for refusal are found, the DGIP issues a written rejection decision.

Appeal Process

If the application is rejected, the applicant may file an appeal to the Trademark Appeal Commission (Komisi Banding Merek) within 90 days from the date of receiving the rejection decision (Article 25).

Importance of Clearance Search

Given the relative grounds for refusal, it is highly recommended to conduct a pre-filing clearance search to assess the risk of conflict with existing trademarks. This helps minimize rejection risk and supports the efficiency of the registration process.

Substantive examination is a critical part of trademark registration in Indonesia. Understanding the legal criteria—both absolute and relative—is essential for applicants seeking strong and enforceable trademark rights. Working with an IP professional to review the application’s strength and conduct prior searches can significantly enhance the chances of successful registration. 

For tailored advice or assistance with Trademark Substantive Examination in Indonesia, contact RH & Partners’ IP specialists at rhp@rhp.co.id. [RH & Partners/ Khudewi]

By: Khurnia Hudewi

Mobile Phone: +62 878 8651 1479

E-mail : khudewi@rhp.co.id

Trademark non-use cancellation remains a critical remedy for parties seeking to clear unused registrations and combat trademark squatters under Indonesian law. Recent regulatory and procedural developments in 2024–2025 have influenced both strategy and evidentiary requirements, making careful preparation essential.

 Legal Basis and Key Changes

 – Grounds for Non-Use Cancellation: Under Article 74 of Indonesia’s Trademark Law, a registered trademark becomes vulnerable to cancellation if it has not been used in trade for five consecutive years since registration or last use.

– Recent Extension of Non-Use Period: Notably, the required non-use period was extended from three years to five years beginning July 2024, following Constitutional Court Decision No 144/PUU-XXI/2023.

– Exceptions: Valid reasons for non-use include import restrictions, government prohibitions, or force majeure events such as economic crises or pandemics.

Steps and Practical Guidance

1. Plaintiff Qualifications

Interested Party Requirement: Plaintiffs must demonstrate legitimate interest, commonly validated by a pending trademark application for the same mark.

2. Evidentiary Burden

– Market Survey Data: Plaintiffs bear the responsibility of proof. A robust market survey is vital, and should:

    –  Be measurable, clear, and conducted by credible agencies.

    – Cover a representative sample, typically including major Indonesian cities such as Jakarta, Lampung, Balikpapan, Surabaya, Makassar, and Denpasar.

– Avoid Token Use: Courts may disregard “token use” (minimal or engineered uses to maintain registration), but consistency in rulings is still developing. Plaintiffs should actively target evidence that pre-empts engineered use responses from registrants.

3. Specific Product Requirements

– If challenging marks for regulated products like pharmaceuticals, food, or telecom equipment, lack of government registrations or permits can bolster a case but is rarely decisive without direct non-use evidence.

– Example: For medicines, absence of marketing authorization from BPOM can support arguments but should accompany market survey findings.

4. Procedural Cautions

– Lawsuits must strictly comply with legal formalities. Historical rejections have occurred due to defective pleadings, improper power of attorney, and overextended requests for relief.

– Plaintiffs must ensure reports are properly signed and stamped by market survey agencies, a recurring defect leading to dismissals.

5. Strategic Considerations

– Cost and Complexity: Indonesia’s geographical diversity and market size often make thorough investigation expensive and logistically challenging.

– Alternative Solutions: Consider amicable settlements or bad-faith invalidation actions, which may have higher success rates and lower evidentiary burdens compared to non-use cancellations.

Statistics from Recent Decisions

– Out of recent published decisions:

– 11 cases were dismissed procedurally.

– 4 cases were rejected on merits.

– 10 registrations were successfully cancelled.

As RH & Partners continues to advocate for fair IP practices, it is essential for our clients and network to approach non-use cancellation actions with meticulous preparation and a firm grasp of both legal and practical requirements. Market surveys should be comprehensive, procedural compliance strict, and alternative dispute resolution considered where feasible. The extension of the non-use period to five years makes the evidentiary threshold more stringent but underlines the importance of active portfolio management – Khurnia Hudewi, Managing Partner, RH & Partners.

For trademark owners, applicants, and legal professionals seeking clarity and strategic support in non-use cancellation or broader IP issues, RH & Partners stands ready to assist. Our experienced team delivers tailored guidance, from initial market surveys and evidence gathering to expert litigation and amicable dispute resolution. Let us be your trusted partner in safeguarding your intellectual property with rigor, efficiency, and proven expertise.

Contact RH & Partners today to discuss your IP needs and maximize your protection in Indonesia and beyond.

By: Khurnia Hudewi

Mobile Phone: +62 878 8651 1479

E-mail : khudewi@rhp.co.id

Key Procedures & Deadlines

– Opposition Window: Trademark applications in Indonesia can be opposed for 2 months (60 days) starting from their publication in the Official Gazette of the Directorate General of Intellectual Property (DGIP).

– Digital Filing: All oppositions are filed online via the DGIP portal. Applicants are notified and may submit a rebuttal; these materials are reviewed during the official examination.

Grounds for Opposition

– Prior rights: submission of marks identical or similar to earlier registered/applied marks.

– Legal non-compliance: violation of Indonesian laws or public order.

– Bad faith: evidence that the applicant is attempting to benefit unfairly (e.g., mimicking famous marks).

– Strong documentation (such as prior registrations, market activities, promotional evidence) greatly improves opposition success.

Trends & Statistics

– Most opposed classes: Class 25 (clothing), 9 (electronics), 3 (cosmetics), 35 (services).

– Current concern: Bad-faith filings and trademark squatting require prompt, proactive monitoring as the opposition window is relatively short.

– Post-opposition: Challenges after registration require time-consuming cancellation proceedings before the Commercial Court.

Key Case Highlights (2025)

– BYD v. Denza (PT Worcas Nusantara Abadi): BYD’s trademark annulment was dismissed due to incorrect defendant status from a prior rights transfer, leaving issues of similarity/bad faith unaddressed.

– PUREDERM non-use: Non-use rules (now five years) led to effective cancellation of dormant marks and new market opportunities for legitimate businesses.

Regulatory Developments

1. Substantive Review: Oppositions are combined with the DGIP’s examination, leading to faster but sometimes unpredictable outcomes.

2. Non-use Extension: Since July 2024, the period for non-use cancellation is increased from three to five years, allowing more time to challenge inactive marks and facilitate market entry.

Practical Advice for Brand Owners

– Monitor Publications: Frequent review of the Gazette is crucial for early action.

– Prepare Evidence: Assemble proof of use and registration immediately upon identifying risks.

– Litigation Backup: Be prepared to initiate court action if oppositions are unsuccessful or the window lapses.

At RH & Partners, we see increasingly swift, high-stakes activity within Indonesia’s trademark opposition landscape. The combination of a strict 2-month window and procedural formalities means that IP owners must be attentive, decisive, and fully prepared. As courts continue to scrutinize bad-faith filings and embrace expanded non-use cancellation, we recommend businesses work closely with counsel to safeguard their brands and maintain competitive positioning in the Indonesian market. — Khurnia Hudewi, Managing Partner

For tailored trademark monitoring services or strategic opposition advice, please reach out directly to the RH & Partners at rhp@rhp.co.id.

By: Khurnia Hudewi

Mobile Phone: +62 878 8651 1479

E-mail : khudewi@rhp.co.id

RH & Partners provides this weekly update on trademark registration in Indonesia, focusing on how the Nice Classification system shapes the process for selecting goods and services to be protected under trademark law.

The Nice Agreement’s Global Impact

The Nice Agreement, signed in 1957 in Nice, France, established a unified, internationally recognized system (the Nice Classification) for organizing goods and services in trademark applications. The system, maintained and revised by the World Intellectual Property Organization (WIPO), is now the global standard, adopted by Indonesia and over 80 other countries. It streamlines international trademark protection by categorizing goods and services into 45 classes: 1–34 for goods and 35–45 for services.

Trademark Filing in Indonesia: Adherence to International Norms

Indonesia, having ratified the Nice Agreement, now aligns its trademark application and examination processes with this international classification. Every application to the Directorate General of Intellectual Property (DGIP) must specify the exact goods and/or services that the mark will cover, referencing the relevant Nice class numbers. This harmonization aids not only local but also international applicants seeking multi-jurisdictional protection, ensuring clarity and consistency.

Selecting Goods and Services: Practical Guidelines

– Applicants must carefully select goods/services from the Nice Classification index, ensuring they match the intended use for the mark.

–  For unique, traditional, or newly emerging goods and services not yet listed, applicants can request inclusion, supported by international priority documentation or existing Nice listings.

–  RH & Partners recommends using official class headings and consulting the Alphabetical List and the explanatory notes for each class to avoid errors or delays in application.

Regulatory Developments

Recent changes in Indonesia extend the non-use period for registered marks, reflecting flexibility and adaptability for trademark holders, including MSMEs and startups. Such developments strengthen the local market’s ability to innovate without risking trademark protection prematurely.

Why Nice Classification Matters

Indonesia’s commitment to the Nice Agreement delivers predictability in trademark protection, empowering businesses to compete locally and globally. RH & Partners is committed to guiding clients through every step, from classification to legal compliance, ensuring strong intellectual property protection under both Indonesian and international standards.

For ongoing questions or filing support, consult RH & Partners for tailored legal services and up-to-date guidance on classification and regulatory changes. [RH & Partners/Khudewi]

By: Khurnia Hudewi

Mobile Phone: +62 878 8651 1479

E-mail : khudewi@rhp.co.id

Indonesian Trademark Law (Law No. 20 of 2016) provides enhanced protection for well-known marks—those widely recognized in Indonesia or internationally—even if they are not yet registered locally. Key articles relevant to protection are Article 21 (refusal of similar trademark registration), Article 76 (cancellation proceedings), and Article 83 (enforcement options). The substantive examination phase checks for conflicts with well-known marks and enables objections before registration 

Recent Trends & Developments

– There has been a major increase in trademark filings and enforcements in early 2025, with the Ministry of    Law & Human Rights launching stronger digital infrastructure and the “Cyber Patrol” unit to fight infringemen.

– New trademark applications are rejected if they are identical or similar to a well-known mark, whether or not  the well-known mark is registered in Indonesia

– Well-known marks receive protection even in unrelated product or service categories if harm to reputation or distinctiveness is possible.

Enforcement Insights & Case Updates

Recent Supreme Court cases emphasized the seriousness of protecting global brands. Examples include:

– ExxonMobil and Prada SA successfully defended their well-known marks against local imitators, confirming Indonesia’s commitment to international standards.

– Owners of well-known marks can file lawsuits for infringement or cancellation of confusingly similar marks, even if the mark has not been used in Indonesia for three consecutive years.

Practical Recommendations

–  Trademark owners should regularly monitor new trademark publications and promptly file oppositions against similar or potentially infringing applications during the two-month opposition window.

–  Proving “well-known” status requires robust evidence: foreign registrations, market share, use, promotional activity, and consumer surveys.

–  Ensure genuine, continuous trademark use; non-use for three years is sufficient grounds for cancellation unless valid reasons exist.

–  For strategic renewal of non-use trademarks, maintain a strong documentary trail and review portfolio value vs. costs, as trademarks can be challenged and deleted for non-use.

Challenges remain in public awareness, the evidence burden to prove well-known status, and harmonization with international treaties. The Indonesian government continues efforts to align its regulations with global standards and improve enforcement capacity.

For tailored advice and assistance, RH & Partners provides comprehensive trademark protection and dispute resolution services in Indonesia.

By: Khurnia Hudewi

Mobile Phone: +62 878 8651 1479

E-mail : khudewi@rhp.co.id

Trademark protection in Indonesia is primarily governed by Law No. 20 of 2016 on Trademarks and Geographical Indications (“Trademark Law”). The legislation aims to ensure that trademarks serve their essential function as a source identifier for goods and services, while preventing misuse of the system by parties acting dishonestly. A recurring issue in practice is the problem of trademark filings made in bad faith.

Although “bad faith” is not exhaustively defined in the Trademark Law, the concept has been consistently applied in administrative practice before the Directorate General of Intellectual Property (“DGIP”) and in decisions of the Indonesian Commercial Courts and the Supreme Court. 

Legal Framework

 1.Grounds for Rejection

– Article 21(3) of the Trademark Law expressly provides that a trademark application shall be refused if it is filed in bad faith. This provision empowers the DGIP to prevent the registration of marks where dishonest intent is apparent.

2.Grounds for Cancellation

– Article 77(2) of the Trademark Law stipulates that a registered mark may be cancelled if the application was made in bad faith.

– Article 76(1) allows cancellation actions to be brought by interested parties before the Commercial Court. Such action must generally be filed within five years from the date of registration. However, where the registration contravenes morality, religion, or public order, cancellation may be sought at any time  (Article 76(2)).

3. International Obligations

– Indonesia, as a member of the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement, is obligated to protect well-known marks against bad-faith registration. This is reflected in Article 21(1)(b)–(c) of the Trademark Law, which prohibits the registration of marks identical or similar to well-known marks.

Indicators of Bad Faith

While the law does not provide a closed definition, several indicators of bad faith have emerged in practice:

– Prior Knowledge of the Earlier Mark: The applicant knew or should reasonably have known of the existence of another party’s mark, often due to prior business dealings, distributorships, or contractual relationships.

– Intent to Free-Ride on Reputation: The filing is made to exploit the goodwill of an established brand.

– Trademark Squatting: The applicant registers a mark without genuine intent to use it in commerce, but rather to block or pressure the rightful owner.

– Pattern of Dishonest Conduct: Evidence of repeated filings of well-known foreign marks without authorization.

 The Commercial Courts frequently assess bad faith by considering the fame of the earlier mark, the applicant’s business relationship with the rightful owner, and whether the registration serves a legitimate commercial purpose.

Judicial and Administrative Practice

Indonesian jurisprudence recognizes that good faith is a fundamental principle of trademark law. Courts have ruled that bad faith exists where the applicant seeks to misappropriate another party’s intellectual property or reputation.

– For example, the Supreme Court has annulled registrations where a local party, previously acting as distributor or business partner, sought to register a principal’s foreign mark in their own name.

– The DGIP, at the examination stage, also relies on Article 21(3) to reject marks where evidence indicates opportunistic filing.

This approach aligns with international standards, particularly the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, which Indonesia often considers in interpreting bad faith cases.

Practical Implications for Trademark Owners

– Opposition Proceedings: During the publication stage, rights holders may file an opposition based on bad faith under Article 16 of the Trademark Law.

– Cancellation Actions: If registration has already been granted, cancellation proceedings may be initiated under Articles 76–77.

– Preventive Strategy: Continuous monitoring of the DGIP trademark journal is essential to detect bad faith filings promptly.

– Evidence Collection: Documentation of prior use, reputation, and contractual relationships is critical to establish bad faith in court proceedings.

The Indonesian Trademark Law explicitly prohibits trademark registrations made in bad faith, reflecting a strong public policy interest in safeguarding fair competition and protecting legitimate business actors. Although the statutory framework leaves the definition of “bad faith” open, both the DGIP and Indonesian courts have consistently interpreted the concept in line with principles of honesty, fairness, and international practice.

For brand owners, vigilance remains key. Timely opposition and cancellation actions, supported by robust evidence, are the most effective means to combat bad faith filings and to ensure that the Indonesian trademark system fulfills its function as a fair mechanism for the protection of intellectual property rights. [RH & Partners/khudewi]

For further advice or assistance regarding trademark bad faith issues in Indonesia, please contact RH & Partners at rhp@rhp.co.id or khudewi@rhp.co.id.

By: Khurnia Hudewi

Mobile Phone: +62 878 8651 1479

E-mail : khudewi@rhp.co.id