History Of Legal Regulations On Trademarks In Indonesia.

24 November 2021

Last week, we reviewed the legal history of Trademarks , from ancient civilizations to the post-war era. Maybe partners realize that Indonesia has not been mentioned at all, this is because our country is still young, and therefore the history of brand protection in Indonesia is relatively new and short. Nevertheless, the development of the Law on Marks as we know it has gone through various important stages.

Similar to many other regulations in Indonesia, the beginning of the Trademark law was strongly influenced by the Dutch colonial era. The first law related to trademarks that applies in Indonesia is the Reglement Industriele Eigendom (RIE) which is contained in Stb. 1912 No. 545 Jo. Stb.1913 No.214. This regulation has long been used and even continues to be recognized after independence, in accordance with Article II of the Transitional Rules of the Constitution of the Republic of Indonesia which stipulates the entry into force of State Agencies and previous regulations, new regulations are made.

The legacy of the Dutch law was finally abandoned after 16 years of Indonesia’s independence, when Indonesia finally had its own law regarding trademarks, specifically Law no. 21 of 1961 concerning Corporate Marks and Commercial Marks. This law was promulgated on October 11, 1961 and published in the State Gazette of the Republic of Indonesia No. 290, with the explanation contained in the Supplement to the State Gazette of the Republic of Indonesia No. 2341. Trademark Law 61 came into force in that month of the year.

Trademark Law 61 has many similarities with Reglement Industriele Eigendom. The important difference, among others, lies in the validity period of the brand, which is 10 (ten) which means only half of the provisions of RIE 1912, which is 20 (twenty) years. The rest, the Trademark Law 61 classifies goods into 35 different classes. This classification is in line with the International agreement on the classification of goods for trademark registration in Nice in 1957 (re-revised in Stockholm in 1967). Such a classification is not recognized in RIE 1912.

For a long period of time, this Law was used for Marks. New changes occurred in the decade of the 90s, where the regulations regarding brands underwent several revisions. The Trademark Law 61 was deemed not in accordance with the development of the needs of the community at that time and therefore it was replaced with Law Number 19 of 1992 concerning Marks. Promulgated in the State Gazette of the Republic of Indonesia with an explanation contained in the Supplement to the State Gazette Number 3490 on August 28, 1992 and came into force on April 1, 1993.

Here are some crucial differences between the Trademark Law 92 and the Trademark Law 61:

1. The scope of settings is expanded. Trademark Law 61 only limits company marks and commercial marks, both of which refer to the same thing, namely trademarks without covering service marks. With the expansion of the scope of regulation by the Trademark Law 92, the scope of the finished mark includes trademarks and service marks, and can accommodate other brand meanings such as collective marks , certification marks , associate marks and others.
2. Change from a declarative system ( first to use ) to a constitutive system ( first to file ).
3. Examination is not only based on the completeness of formal requirements, but also substantively.
4. The announcement of the application for registration of a mark, in order to provide an opportunity for interested parties to file objections.
5. Regulating trademark registration by using priority rights in accordance with the provisions of the Convention for the Protection of Industrial Property.
6. The Trademark Law 92 regulates the transfer of rights to a trademark based on a license which is not regulated in the Trademark Law 61.
7. Trademark Law 92 regulates criminal sanctions both for acts that are classified as crimes and as violations.
8. Trademark Law 92 introduces a registration system based on priority rights.
9. The Trademark Law 92 recognizes the opposition proceedings ( opposition proceeding ), while the Trademark Law 61 only recognizes the procedure for canceling the mark ( cancellation proceeding ).
10. Trademark Law 92 recognizes licenses.

In 1997, several revisions were made through the issuance of Law Number 14 of 1997 concerning Amendments to Law Number 19 of 1992 concerning Marks. This change was made taking into account the provisions of the TRIPs Agreement.

After the reformation, to be precise in 2001, the 1992 Trademark Law as amended by the 1997 Trademark Law was replaced by Law Number 15 of 2001 concerning Marks. One of the important differences in the 2001 Trademark Law compared to the previous law is in the application settlement process. In the 2001 Trademark Law, a substantive examination is carried out after the application is declared to meet the administrative requirements. This change is intended to be able to more quickly find out whether an application is approved or rejected, and to provide an opportunity for other parties to file objections to applications that have been approved for registration. The announcement period is 3 months, which is shorter than the announcement period based on the previous Trademark Law.

With regard to priority rights, the 2001 Trademark Law stipulates that if the Petitioner does not complete proof of receipt of the application that first gave rise to the Priority Right within three months after the expiration of the Priority Right, the Application is processed like a normal Application without using the Priority Right. Applications that are a loss to the applicant will also be rejected. Furthermore, in addition to the protection of trademarks and service marks, the 2001 Trademark Law also regulates the protection of geographical indications. In addition, provisions on arbitration and alternative dispute resolution are also contained.

After the 2001 Trademark Law, the last amendment occurred in 2016 with the enactment of the 2016 Trademark and Geographical Indication Law. At the time of writing this article, the 2016 Trademark Law is the prevailing regulation in Indonesia regarding trademark protection. There are several important changes presented by this law, the first (and most obvious) is the name change which now also includes geographical indications. The rest, other changes are:

1. The 2001 Trademark Law only covers brands in the conventional form, while the latest Law expands the brand concept to also cover 3-dimensional brands, sound brands, and holographic brands.
2. The registration process is shortened: The application is followed by a formal examination, followed by an announcement then by a substantive examination and ending with a certification.
3. The Minister has the right to delete a registered mark if the mark is a Geographical Indication, or is contrary to morality and religion. Previously the minister did not have the right to remove a registered mark. Meanwhile, the owner of the registered mark can file an objection through a lawsuit to the Administrative Court.
4. Well-known brand owners can now file lawsuits based on court decisions
5. the weighting of criminal sanctions for brands whose products threaten the safety and health of human life.
6. In the previous law, geographical indications were only mentioned a little. The 2016 Trademark Law regulates geographical indications more comprehensively.