Introduction to trademarks

From HAKItree

English Indonesian

What is a trade mark?

A trade mark is a sign in the form of a picture, name, word, letters, figures, composition of colours, or a combination of these elements, used in trade to distinguish the goods and services of one trader from those of another i.e. to function as a badge of origin.

How are trade marks protected in Indonesia?

It is especially important to register your mark in Indonesia because trade mark piracy is a serious problem. Trade mark piracy exists where a third party (not the legitimate owner of the mark) registers the mark first in Indonesia, thereby preventing the legitimate owner from registering it. This is very common in the case of well-known marks. The remedy is to apply to the Court to cancel the unauthorised registration.

Trade marks are registered with the Trade Marks Office (TMO). A mark may be registered by a person, several persons jointly, or a company. Trade marks are registered in relation to particular goods or services. The International Classification of Goods and Services sets out the 45 classes of goods and services in relation to which marks can be registered. You will need to specify the particular goods or services in relation to which you wish to register. More classes means broader protection, but higher cost.

How long does registration take?

It usually takes two years for the registration certificate to be issued. Once an application is filed, the TMO examines it to check that all formalities have been complied with and that there are no prior conflicting marks. If objections are raised, the TMO will issue a letter and the applicant then has 30 days in which to respond. If the application is accepted by the TMO, it will be published in the Government Gazette. At any time within three months of publication, it may be opposed by third parties on various grounds including similarity of the mark to prior registered marks. If no opposition is raised, the TMO will issue a registration certificate.

How long does a trade mark registration last?

Once registered, a trade mark is protected in Indonesia for 10 years from the date of filing. The registration can be renewed for subsequent periods of 10 years. Applications for renewal can be filed up to 12 months before expiry of the then current registration period, but not thereafter.

What marks are not registrable?

Any trade mark can be registered except a mark which:

has been applied for in bad faith (such as a pirated mark);
is contrary to laws and regulations, morality or religion, or public order;
has no distinctive features (e.g. the number 1 alone, or a common word);
has become public property (i.e. is generic - the name by which the goods are commonly described);
is descriptive of the goods or services for which registration is sought;
is identical with or similar to a prior registered mark for similar goods or services;
is identical with or similar to a well-known mark for similar or dissimilar goods or services (a mark will qualify as a well-known mark only if certain criteria are met);
is similar to a known geographical indication (i.e. Champagne or Toraja); or
constitutes or resembles the name of a famous person, photograph or the name of a legal entity (e.g. a company name).

Must the trade mark be used?

The trade mark must be used in exact accordance with the mark as registered. If the mark is not used commercially for a consecutive period of three years from the date of registration, or any consecutive three year period thereafter, the registration can be deleted by a third party making application to the court on the ground of non-use. The trade mark can be used with the symbol ® to indicate it is a registered trade mark or the symbol ™ if it is not registered. Registration numbers are technically required by the law to be shown on goods.

What if I license use of the mark?

The law states that unless a licence agreement has been recorded at the TMO it will have no effect on third parties. However, as of 2008, the regulations for licences have not been implemented and it is not yet possible for licences to be recorded. The use of a mark by a licensee is deemed to be use by the owner of the mark. A licensee, as well as the trade mark owner, can commence infringement proceedings.