Article 1 number (1) of Law Number 15 of 2001 on Mark (“Law No.15/2001”) defines mark as a sign in the form of a picture, name, word, letters, numerals, compositions of colours, or a combination of those elements, which has a distinguishing feature and is used in trading of goods or services. The right of mark is an exclusive right granted by the State to the owner of a mark which is registered in the general register of marks for a certain period of time, for the owner to use the mark or to grant permission to another party to use it.
A mark cannot be registered on the basis of application by a bad faith applicant. Under Article 5 of Law No. 15/2001, a mark cannot be registered if containing one of the following elements:
- contravene prevailing rules and regulations, morality or public order;
- lack distinctive character;
- have become public property; or
- constitute information, or are related to the goods or services for which registration is sought.
The Directorate General shall refuse the application if the mark:
- is similar, in whole or in essential part, to another’s mark which has previously been registered for identical goods or services;
- is similar, in whole or in essential part, to another’s well-known mark;
- is similar, in whole or in essential part, to a known geographical indication;
- constitutes or resembles the name or portrait of a famous person, or the name of another’s legal entity, unless the relevant person has consented in writing;
- imitates or resembles the name or abbreviation, flag, coat of arms, symbol or emblem of a state or of a national or international institution, unless the competent authority has consented in writing; or
- imitates or resembles an official sign, seal or stamp used by a state or a government institution, unless the competent authority has consented in writing.
Application of Mark Registration
Article 7 paragraph (1) Law No.15/2001 stipulates that an application shall be filed in writing using Indonesian language to the Directorate General by stating:
- the date, month and year;
- complete name, nationality and address of the applicant;
- complete name and address of the proxy, if the application is filed through a proxy;
- colours, if the mark uses colour elements;
- country and filing date of the original application, if the application is filed with priority right.
The application shall be signed by the applicant or his proxy. The applicant may comprise of a person or several persons jointly together or a legal entity. An application that is filed by an applicant who resides or permanently domiciles outside of Indonesia must be filed through a proxy in Indonesia.
An application for 2 (two) or more classes of goods and/or services may be filed in a single application. An application with a priority right shall be filed within a period of 6 (six) months at the latest, commencing from the first filing date of the application in another country, which is a member of the Paris Convention for the Protection of Industrial Property or a member of the World Trade Organization. If the above mentioned administrative requirements have been fulfilled by the applicant, the Directorate General will provide a filing date. Filing date is a date when an application is deemed to have met with the administrative requirements.
At the latest 30 (thirty) days from the filing date, the examiner at Directorate General shall conduct a substantive examination towards the application. The substantive examination must be done at the latest 9 (nine) months. If the application can be approved based on the result of substantive examination, then under the approval of Directorate General, the application will be announced in the Official Gazette of Mark. If the application is rejected, then the Directorate General will inform the applicant or its proxy about the rejection in writing and also the reasons of rejection.
The application will be announced on the official gazette of marks at the latest 10 (ten) days from the date of approval for registration by the substantive examiner. The announcement shall be made by mentioning:
- full name and complete address of the applicant, as well as the full name and address of the proxy;
- class and type of goods and/or services;
- filing date of the application;
- name of country and filing date of the first application, if the application is filed with a priority right.
- sample of mark, including information concerning its colours, and if the mark etiquette uses a foreign language and or letters other than the Latin alphabet and or numerals which are not commonly used in Indonesian language, then it must be furnished with its translation in the Indonesian language, using the Latin alphabet or numerals which are commonly used in Indonesian language, as well as its pronunciation in the Latin spellings.
The announcement shall last for 3 (three) months, and during that period any party may file an opposition to the application in writing to the Directorate General. The opposition may be filed if there are sufficient reasons and evidences that the application of mark shall be rejected and not be registered. If there is an opposition, the Directorate General will deliver the copy of opposition letter to the applicant or its proxy at the latest 14 (fourteen) days from the receipt date of opposition letter by the Directorate General. The applicant or its proxy shall have the right to file a response to the opposition in writing to the Directorate General at the latest 2 (two) months since the receipt date of copy of the opposition letter from the Directorate General. The Directorate General will re-examine the application based on the objection and applicant’s response. The re-examination shall be done at the latest 2 (two) months from the expiry of announcement period. If the examiner reports that the opposition can be accepted then the Directorate General shall inform the applicant that the application cannot be registered or is rejected. If the opposition is accepted, the applicant or its proxy may file an appeal. If the examiner decides that the opposition should be rejected, the application will be registered in the general register of marks, with the approval of the Directorate General.
Issuance of Certificate
Article 27 of Law No. 15/2001 states that if there are no oppositions to the application, the Directorate General must issue and grant a certificate of mark to the applicant or its proxy within 30 (thirty) days of the expiry of the publication period. However, if there is an opposition and the opposition is rejected, then the Directorate General issues and grants a certificate of mark to the applicant or its proxy within 30 (thirty) days of the date on which the application was approved for registration.
A registered mark will be protected for 10 years from the filing date, and the protection period can be extended.