How can you protect your IP rights?

Protect your trademarks in Indonesia

There is one route of protection of marks in Indonesia—the national route, but Indonesia is currently working towards acceding to the Madrid Protocol that would enable trademark protection via the international route. The national route is excellent if you want to protect your mark only in Indonesia, and if you are thinking of eventually protecting your mark via Madrid Protocol through the IP Office of Indonesia, having a national mark is essential.

The Directorate General of Intellectual Property (DGIP) is the national agency in charge of registering trademarks in Indonesia. DGIP is under the supervision of the Ministry of Law and Human Rights.

The contact details of the office are as follows:

Directorate General of Intellectual Property
Ministry of Law and Human Rights
Administrative of the Directorate of Marks and Geographical Indications
Jalan H. R. Rasuna Said, Kav 8-9,
Jakarta Selatan 12190, INDONESIA
Phone: +62 21 579 05619
Fax: (021) -57905619
Website: www.dgip.go.id

The Trademarks Law of Indonesia (Law No. 15 of August 1, 2001, regarding Marks) provides for the protection of any visually perceptible sign in that may be a picture, name, word, letters, figures, composition of colours, or a combination of these elements that distinguishes goods and services of any person or entity. Collective marks may also be protected in Indonesia.

  • The application must be filed using the prescribed application form available on the website of DGIP. The office also accepts online applications.
  • The filing language is Bahasa Indonesia.
  • DGIP accepts the Nice classification, the ASEAN List of Goods, and the Common-EU Madrid List. The terms accepted by DGIP may be accessed at www.asean-tmclass.org.
Any individual, firm or company (local or foreign) can apply directly for trademark protection in Indonesia. Representation is not required for resident applications, but an application filed by a non-resident or someone permanently domiciled outside the Republic of Indonesia must be filed through a proxy (referred to as consultants who are accredited by the IP Office) with a local address for service in Indonesia.

The following are the minimum requirements for the application to be given a filing date:

  • Name, nationality, and address of the applicant;
  • If filing is made through a proxy, the name and address of the applicant;
  • If priority is claimed, the country and priority date of the earlier filing;
  • Reproduction of the mark;
  • Signature of the applicant or proxy;
  • Power of attorney signed by the applicant;
  • List of goods or services;
  • Filing fee.

If there is a claim of colour, this must also be indicated in the application form and checked during formality examination.

The Office shall conduct an examination to determine the completeness of the requirements for registration of the mark. If the deficiencies relate to the minimum requirements for a filing date, the applicant will be given a period of two months within which to complete the deficiencies. However, if the deficiency pertains to the submission of the evidence of the priority and its translation into the Indonesian Language, the applicant shall be given a period of three months.

Deficiencies not corrected will result in the withdrawal of the application. If the applicant complies with all the requirements, the substantive examination will commence within 30 days from the filing date.

Once the formality examination has been completed and the requirements are met, the application shall undergo substantive examination following the Trademark Act.

The application for the registration of a mark shall be refused if:

  • the applicant filed the application in bad faith.
  • the mark—
    • contradicts the prevailing rules and regulations, religious morals, or public order;
    • does not have distinguishing features;
    • has become part of the public domain; or
    • constitutes information or related to the goods or services for which registration is requested, i.e., it consists solely of a mark indicating the goods or services, origin, quality, raw material, quantity, or use of the mark for which registration is sought.
  • if the relevant mark is—
    • similar in its essential part or in its entirety with a mark owned by another party which has previously been registered for the same kind of goods and/or services;
    • similar in its essential part or in its entirety with a well-known mark owned by another party for the same kind of goods and/ or services;
    • similar in its essential part or in its entirety with a known geographical indication.
  • if the mark pertains to goods and/or services which are not of the same kind as those of the earlier well-known mark, provided that it fulfils certain conditions contain Government Regulations.
  • if the mark—
    • constitutes or resembles the name of a famous person, photograph, or the name of a legal entity belonging to another party, except with the written consent of the entitled party;
    • constitutes an imitation or resembles a name or abbreviation of a name, flag or coat of arms or a symbol, or an emblem of a state, or of a national or international institution, except with the written consent of the competent authority;
    • constitutes an imitation or resembles an official sign or seal or stamp used by a state or a government institution, except with the written con sent of the competent authority.

Once the substantive examination has been completed and the application can be accepted for registration, the mark shall be advertised in the Official Gazette upon approval of the publication by the Director General.

An objection to the registration of the mark may be filed within a period of 3 months from the announcement of the mark in the Gazette.

Where no objection is filed, the registration shall be granted and the certificate of registration issued within 30 days from the date of expiry of the announcement period.

The registration is valid for 10 years counted from the filing date of the mark. The trade mark owner may renew the registration of the mark for consecutive periods of ten years, subject to the payment of the renewal fee.

There is only one route of protection of industrial designs available in Indonesia—the national route because not being a member of the Hague Agreement, the international route of protection is not available in Indonesia.

The Directorate General of Intellectual Property (DGIP) is the national agency in charge of registering trademarks in Indonesia. DGIP is under the supervision of the Ministry of Law and Human Rights.

The contact details of the office are as follows:

Directorate General of Intellectual Property
Ministry of Law and Human Rights
Administrative of the Directorate of Marks and Geographical Indications
Jalan H. R. Rasuna Said, Kav 8-9,
Jakarta Selatan 12190, INDONESIA
Phone: +62 21 579 05619
Fax: (021) -57905619
Website: www.dgip.go.id
Any individual, firm or company (local or foreign) can apply directly for trademark protection in Indonesia. Representation is not required for resident applications, but an application filed by a non-resident or someone permanently domiciled outside the Republic of Indonesia must be filed through a proxy (referred to as consultants who are accredited by the IP Office) with a local address for service in Indonesia.
  • The application must be filed using the prescribed application form.
  • The filing language is English.
  • The office accepts paper applications only.

The application for registration of an industrial design must contain the following

  • name, complete address and nationality of the designer;
  • name, complete address and nationality of the applicant;
  • name and complete address of the proxy, if the application is filed through a proxy;
  • if there is a priority claim, the name of country and the priority date;

The application shall be accompanied by the following:

  • physical sample, drawing, or photograph and the description of the industrial design subject of the application.
  • Special Power of Attorney, if the application is filed by a proxy.
  • a statement that the industrial design being applied for is the property of the applicant or the designer.
  • If the application is filed by more than one applicant, such application shall be signed by one of the applicants with a written agreement from the other applicants.
  • Where an application is not filed by the designer, sufficient evidence that the applicant is entitled to the industrial design subject of the application.

An application may be filed for one industrial design or several industrial designs constituting unity of a design or belonging to the same class.

The application shall be accorded a filing date if the following requirements are met:

  • complete information in the application form;
  • physical sample, drawing, photograph and a description of the industrial design being applied for registration; and
  • prescribed filing fee.

An application with a claim for priority right shall be filed within a period of six (6) months from the first filing in any country that is a member of the Paris Convention or a member of the World Trade Organization. The claim must be supported by the priority document legalized by the office where the earlier application was filed, accompanied by its translation in Indonesian language, within a period of 3 (three) months from filing the application in Indonesia.

Where the applicant fails to submit the legalized priority document and its translation into the Indonesian language, the application will be deemed to have been filed without a priority claim.

In addition to the copy of the application, the Office may require the submission of the following:

  • a complete copy of the right to an industrial design that has been granted in connection with the first application filed in other countries; and
  • other valid documents needed to help make a judgment that the industrial design is new.

The Industrial Designs Law of Indonesia defines industrial design as a “creation on the shape, configuration, or the composition of lines or colours, or lines and colours, or the combination thereof in a three or two dimensional form which gives aesthetic impression and can be realized in a three or two dimensional pattern and used to produce a product, goods or an industrial commodity and a handy craft”.

One application can pertain to only one industrial design or several industrial designs that constitute a unity of an industrial design or that belong to the same class.

For an industrial design to be registered in Indonesia, it must be new. The design shall be deemed as new if, on the date of filing or on the priority date, if such priority is claimed, the industrial design is not similar to previous disclosures or has not been previously disclosed.

The previous disclosure of an industrial design shall not be deemed to have been prejudicial to the application if the prior disclosure was made within the period of six (6) months prior to the date of filing, and the industrial design:

  • was displayed in a national or international exhibition in Indonesia or overseas that is official or deemed to be official; or
  • was used in Indonesia by the designer in an experiment for the purposes of education, research or development.

At the time of filing the application, the applicant may request in writing that the publication of the application be deferred. The request for deferment of publication shall not exceed twelve (12) months from the filing date or from the priority date.

After substantive examination, an application that fulfilled the requirements shall be published by the Office no later than three (3) months from the filing date. Where an application that has been refused or deemed withdrawn, but is later registered by a decision of the court, the announcement or publication shall be made after the Office has received a copy of the decision.

The publication or announcement shall contain:

  1. the name and complete address of the applicant;
  2. the name and complete address of the proxy, if the application is filed through a proxy;
  3. the date and number of receipt of application;
  4. the name of country and the priority date, if the application is filed with a priority right;
  5. the title of industrial design; and
  6. drawing or photograph of industrial design.

Any party may file a written objection, including substantive matters, with the DGIP, within three (3) months from the date of the announcement or publication and upon payment of the prescribed fee.

The DGIP shall notify the applicant of the objection, and the applicant has three (3) months from notification to file a written response to the objection.

The examiner shall then conduct substantive examination using the objection and the counter-objection as bases for determining whether or not to register the application. The decision shall be made within six (6) months from the date of termination of the announcement period. The decision shall be notified in writing to the parties within 30 days from the date of iss of the decision.

The protection of an Industrial Design is granted for a period of ten (10) years commencing from the filing date.
Last modified: Tuesday, 29 November 2016, 1:33 PM