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23 November, 2016
The Indonesian House of Representatives finally passed the new Trademark and Geographical Indication Law on 27 October 2016, though it does not yet have a number or effective date. This new Trademark and Geographical Indication Law will replace Law No. 15 of 2001 on Trademarks, and may come into effect at the end of November 2016.
The new law will provide protection to broader types of trademark, as well as make it more time and cost efficient for trademark owners to obtain registration in Indonesia. The new law will also provide a more detailed explanation on registration and protection of geographical indications.
Based on the final draft new law submitted to the Indonesian House of Representatives, some key changes in the recently enacted law are as follows:
New protectable subject matter
The new law introduces new forms of marks that can be protected under the law. The new forms are (i) 3 dimensional forms, (ii) sound and (iii) holograms. These are in addition to the previously protected pictures, logos, names, words, letters, numbers, colors and combinations of two or more of the aforesaid elements.
Minimum requirements
The new law reduces the minimum requirement to file a trademark application. A trademark will be granted a filing date upon submission of a trademark application form, trademark depiction and payment of fees.
Official fees
The new law provides that the official fees of a trademark application filing will now also be determined based on the classes of goods and/or services covered. This will be regulated further in a government regulation.
Publication prior to examination
Unlike the old Trademark Law, the new law stipulates that a trademark application would be directly published within 15 working days after the filing date. Upon completion of the publication period, the Trademark Office will examine the trademark application. Under the old Trademark Law, a trademark application is examined prior to publication.
The publication period will also be cut to two months from three months. The substantive examination will be conducted for a maximum of 150 working days (7.5 months), instead of nine months.
Non-registerable trademarks
There are two new reasons for the Trademark Office to deem a trademark application as not registerable, which are as follows:
- The application includes elements that can mislead the public as to the origin, quality, type, measuring, kind and intended use of the goods and/or services; or is a name of a plant variety protected for similar kinds of goods and/or services.
- The application includes a statement that is not in line with the quality, benefits or efficacy of the goods and/or services.
Generic trademarks
The new law stipulates that any party is allowed to apply for a trademark similar to a generic trademark, as long as there is a distinguishable element to the trademark.
Renewal grace period
There will be a grace period for a trademark renewal process. A trademark renewal can still be submitted a maximum of six months after the end of the 10-year protection period. The submission of a trademark renewal application within the grace period will be subject to a fine.
Renewal of a company logo
Specifically for the renewal of a trademark in the form of a logo or symbol of a company or legal entity, the trademark owner would need to simply pay the renewal fees to renew the trademark, without the requirement to submit a statement of use.
International trademark registration
The new law introduces a provision on registration of international trademarks, which will enable Indonesia to adopt the Madrid Protocol. Applications that originate in Indonesia can only be made once the applicant obtains a trademark registration in Indonesia as the basis of the international trademark registration. This will be further regulated in a government regulation.
Criminal sanctions
Criminal sanctions for trademark infringement have doubled to IDR2 billion.
The new law also introduces punishment in cases where the infringement results in damage to health, the environment and human death of up to ten years’ imprisonment and/or a maximum fine of IDR 5 billion.
Transitional provisions
Trademark applications which have been filed and processed but not yet completed before the effective date of the new law will be processed based on the old Trademark Law (Law No. 15 of 2001 on Trademarks).
Another article will follow once the new Trademark and Geographical Indication Law comes into effect.
For further information, please contact:
Daru Lukiantono , Partner, Hadiputranto, Hadinoto & Partners
daru.lukiantono@bakernet.com
