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