15 December, 2016
Further to our previous article, the new Trademark and Geographical Indication Law has recently been introduced as Law No. 20 of 2016. This new law became effective on 25 November 2016.
Following the enactment of the law, the Directorate General of Intellectual Property (DGIP) announced that the following procedures are effective as of 25 November 2016:
New Trademark Filing Procedure
Any new trademark applications filed after 25 November 2016 will be processed in accordance with the new trademark filing procedure.
The new law adopts a minimum requirement to file a trademark application. A trademark will be granted a filing date upon submission of a trademark application form, a trademark depiction and payment of official fees. Power of Attorney and Statement of Ownership, as well as priority document (if any), can be filed later.
If the applicant do not submit the original signed Power of Attorney and the Statement of Ownership within 30 days after the filing date, the DGIP will issue an official letter, requesting for these original documents to be filed within two months from the date of the above official letter. Failure to complete the original signed documents within the allotted time may cause the trademark application to be considered withdrawn.
As for the priority document, this document needs to be filed within three months from the priority deadline. If not, the trademark application will be processed as an ordinary application, without claiming the priority right.
Within 15 days as of the filing dates, new applications will be put forward for publication for two months in Trademark Journals for opposition purposes.
If no opposition is filed within the publication period, within one month from the end of the publication period, the application will enter into a substantive examination stage for 150 days. The DGIP allows to outsource substantive examinations to experts, if necessary.
If the trademark application passes the substantive examination, the DGIP will issue a certificate of registration, and subsequently publish the trademark registration in a Trademark Journal.
Renewal Grace Period
With regard to trademark renewals that are due after 25 November 2016, and for which the renewal applications have not yet been filed with the DGIP, an application for the renewal of a trademark registration can be filed within 6 months before the expiry date. This trademark registration can also be renewed by paying a surcharge within 6 months after the expiry date. If not renewed within the above period, the registration would be considered officially expired.
With the enactment of the new Trademark and Geographical Indication Law, new policies and implementation regulations will be introduced by either the DGIP or the Government. Further client alerts will be issued once these new policies and implementation regulations are available.
For further information, please contact:
Daru Lukiantono , Partner, Hadiputranto, Hadinoto & Partners
daru.lukiantono@bakernet.com
