New Trademark and Geographical-Indication Bill: Understanding Trademark-Registration Procedures

Indonesian Version

 
Marcell Sihombing, Rofiq Hidayat
 

 

After a lengthy deliberation process, the House of Representatives finally passed the Bill on Trademarks and Geographical Indications (Bill) on 27 October 2016. In essence, the Bill revises a number of obsolete provisions which were originally set out under Law No. 15 of 2001 on Trademarks (Trademark Law), including the various requirements and procedures involved in the registering of trademarks, in an attempt to simplify the trademark-registration process for all applicants, as well as to improve public service.
 
Commenting on this issue, Desy Ratnasari, the Head of the Special House Committee responsible for the drafting of the Bill, asserted that the current Trademark Law had failed to ensure legal certainty as regards the registration of trademarks, owing to the complex mechanisms and requirements which had to be met in order to register geographical indications. Moreover, it has become clear that not all citizens fully understand said mechanisms and requirements.
 
By way of comparison, Ms. Ratnasari referred to the international-trademark registration system stipulated under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), which introduced a set of efficient and affordable procedures for businesses who are looking to register their trademarks outside Indonesia. Inspired by the Madrid Protocol, the new Bill establishes, among other innovations, a simpler and more efficient trademark-registration procedure which allows trademark-registration applications to be filed either by an applicant or by their representatives, and either electronically or manually, in the Indonesian language.
 
Note that all such applications must at least set out the date, month and year of application, as well as the applicant’s valid identity (or the identity and domicile of their representatives), the product’s country of origin, and the date of the trademark request (tanggal permintaan merek). Moreover, any such application must also be supported by a sample trademark design (i.e. a full-color example of a given trademark), a description of the product or products in question (be they goods or services), and also enclose a trademark label and a receipt of trademark registration fee. Note also that registration fees are calculated in accordance with the classification of the goods and/or services in question.
 
In regard to any trademark which takes the form of a three-dimensional logo or picture, the trademark label which must be enclosed should specify the characteristics of said trademark. Similarly, any trademark which takes the form of a sound should enclose a sample of the sound and its notation. And last but not least, any application for trademark registration must also enclose a statement letter declaring that the trademark that is being registered lawfully belongs to the applicant.
 
It is also important to note that a collective application grants ownership over a given trademark to each of the parties taking part in any such application. Thus, each party’s name must be specified on the application and one of the party’s addresses must also be used as the collective domicile. The application form itself only has to be signed by one party however, provided that written approval in support of the application has been supplied by the remaining parties.
 
Moreover, any individual foreign citizens or foreign entities who are domiciled outside Indonesia but who are looking to register their trademarks within the country are required to appoint an official Indonesian representative to act on their behalf. However, in cases where collective applications are being filed by several foreign citizens and/or foreign entities, the parties concerned must draw up and sign a power-of-attorney letter appointing a representative to Indonesia to act on their behalf. These applicants must then declare that they have chosen the address of their appointed Indonesian representative as their Indonesian domicile.
 
Finally, if any parties are looking to register several products which fall under different classifications, then the Bill stipulates that such applications may be combined into a single application, provided that the application specifies a comprehensive list of the products concerned and their respective classifications. More detailed provisions regarding this type of application will be formulated under a separate Ministry Regulation.
 
(cd/sp)