Indonesia amends trade mark laws to improve efficiency and enforcement

Indonesia passed a new trade mark law on October 27 to simplify the application process and to allow for greater protection. It will come into effect on November 26. The new law makes a number of changes to the registration procedure, protection and enforcement of trade marks in Indonesia.

Procedural changes

Under the new legislation, a trade mark application will be published, for a period of two months instead of the previous three, within two weeks from the filing date of the application. A significant change is that the publication stage will occur before the substantive examination stage. All trade marks that pass an initial formality examination will proceed to the publication stage. During this period, a third party may oppose an application. The substantive examination is limited to 150 days, with the Indonesian Trademark Office having to make a decision on the application by the end of the period. In the substantive examination, any possible oppositions are examined. After the substantive examination, no further examination will be allowed.

Endra Prabawa

“The change with the publication period is a return to the law created in 1997,” says Endra Prabawa, partner at Roosdiono & Partners. “With the change in 2001, two examinations are done. With the new change, the examination is just done once after the opposition period, so brand owners need to monitor for trade mark oppositions and there can be a delay in trade mark registration if a cancellation is needed.”

More efficient procedures

“In 2015, Indonesia had over 60,000 trade mark applications, so moving the publication stage up to before the substantive examination will speed up the process,” says Somboon Earterasarun, director of Tilleke & Gibbins’ Jakarta office. “This is a welcomed change as it took a lot of time for registration.”

“It takes one and a half to three years for registration, but the new law can cut the process down to eight to 10 months,” says Prabawa.

Previously, renewals could only be filed 12 months or less before the due date. With the new law, a renewal application can be filed six months before or after the due date.

Earterasaun highlights the difference with the opposition system in another ASEAN jurisdiction. “In Vietnam for example, the opposition period lasts as long as the examination process hasn’t begun, which can be between nine to 10 months and oppositions can be raised during this period of time,” says Earterasaun.

Non-traditional marks

The new law Introduces non-traditional trade marks, including holograms, three-dimensional marks and sound marks.

Madrid Protocol adoption

Like other ASEAN countries, Indonesia is jumping on the bandwagon to adopt the Madrid Protocol so that trade mark applications based on the Protocol are accepted. It will be several months still before the implementing regulations come in.

Criminal penalties increased

Criminal penalties for trade mark infringement will be increased, especially for violations that cause health or environmental problems and/or death. “Criminal charges will go up to 10 years of imprisonment and IDR5 billion ($373,000) in fines, whereas now it is five years of imprisonment and up to IDR2 billion rupee in fines,” says Prabawa.

More can be done

Somboon Earterasaun

 Though a number of new changes are in place, IP lawyers say that there is still room for improvement. “There is still no provision on customs recognition,” says Earterasaun. “There is a strong need for collaboration so that export and import goods can be monitored for counterfeits. Measures are already in place for Vietnam and Cambodia.”

“Generic trade marks are still allowed,” says Prabawa. “This causes issues when anybody can put a word before or after original name and register it as a trade mark, which is not fair for the original brand owner,”

Indonesia has taken a big step in bringing its trade mark laws up to date and increasing the efficiency of the system but gaps still exist that criminals are only too ready to take advantage of. Brand owners should pay attention to the forthcoming implementing regulations for the Madrid Protocol.