Trademarks

Trademark rights in Indonesia are governed under Law 20/2016 on Trademarks as amended by Law 11/2020 on Job Creation and Government Regulation in Lieu of Law 2/2022 on Job Creation.

The Trademark Law adopts the ‘first to file’ rule, which means that trademark rights arise only once the trademark has been registered with the Directorate General of Intellectual Property of the Ministry of Law and Human Rights.

The statutory source of trademark registration can be found in:

• the Trademark Law; and
• Ministry of Law and Human Rights (MOLHR) Regulation 67/2016 on Trademark Registration, as amended by MOLHR Regulation 12/2021.

For international registration, Indonesia has acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Its implementation is governed by Government Regulation 22/2018 on the International Registration of Marks Under the Protocol Relating to the Madrid Agreement on the International Registration of Marks.

Under the Trademark Law, designations that can be displayed in the form an image, logo, name, word, letter, number, colour arrangement in two or three dimensions, sound, hologram or a combination of two or more of those elements to distinguish goods or services may serve as trademarks.

Apart from the identifiers provided in question 2.1, the designation must have distinctive features.

Designations will be ineligible to function as trademarks if they:

• resemble the name or nickname of a famous person, a photo or name of someone else’s legal entity;
• imitate or resemble a name or its abbreviation, a flag, emblem or symbol of a nation, national or international body; or
• imitate or resemble a sign or official stamp used by a state or government body.

As stated in question 1.2, the registration process for trademarks in Indonesia is controlled by the Directorate General of Intellectual Property (DGIP), which is a department under the Ministry of Law and Human Rights.

The fee for an electronic application is IDR 1.8 million per class of goods/services. The DGIP does not charge a fee for the issuance of a trademark certificate.

Yes, the DGIP uses the Nice Classification scheme to categorise goods and services for which the registration of marks is applied. To date, the DGIP uses Version 11 of the Nice Classification. Also, Indonesia has acceded to the Nice Agreement through the issuance of Presidential Regulation 10/2023 on the Accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

The applicant must identify the specific class of goods or services that is compatible with the applied mark and its intended use. In doing so, the applicant can choose more than one class of goods or services for its applied mark, provided that the chosen classes are relevant to the applied mark and its intended use.

Yes, an applicant that lacks a bona fide intention to use the trademark for the identified goods or services can have its application rejected. A lack of bona fide intention can be seen by observing whether the applied mark indicates an intention to imitate or copy a mark that has been known by the public and been used for years to the advantage of the applicant.

Yes, the DGIP searches for conflicting marks during the substantive examination process.

During the trademark registration process, two examinations are conducted by the DGIP. First, the DGIP will check the completeness of the required supporting documents and information. Second, it will:

• examine the substance of the application by considering any objections and conflicting marks; and
• determine whether the trademark in process is eligible to be registered.

Yes. Under the Trademark Law, a mark is ineligible to be registered if it:

• contradicts the state ideology, laws and regulations, morality, religion, public decency or public order;
• is similar or related to, or only restates, the goods and/or services for which registration is sought;
• contains any element that could mislead people about the origin, quality, type, size or purpose of the goods or services, or constitutes the name of a plant variety protected for similar goods or services;
• contains misinformation in relation to the quality, benefits or efficacy of the produced goods and/or services;
• has no distinctive features;
• is a generic name or public emblem; or
• contains a functional form.

No.

No, the Trademark Law only allows an objection to be submitted during the publication period of the applied trademark.

During the registration process, there is no requirement for the trademark to be used commercially in order to obtain registration. In registering a trademark, the applicant must identify the relevant classes of goods or services related to the trademark. The chosen classes of goods or services must be compatible with the intended use of the trademark.

Once the requisite documents and information have been filed through the online system, the DGIP will conduct a formality check to examine whether the application is complete within 30 business days of receipt of filing.

Once the requisite documents and information are deemed complete, within 15 business days of confirmation of the completeness of the filing, the DGIP will publish the trademark application in the Trademark Gazette for two months.

Yes, if the Directorate General of Intellectual Property (DGIP) refuses registration, the applicant may appeal to the Trademark Appeal Commission. The commission is formed by the Ministry of Law and Human Rights. Please see question 4.2 for the procedure.

If a trademark is rejected, the applicant or its proxy may submit an appeal to the Trademark Appeal Commission within 90 business days of the mailing date of the rejection letter. The Trademark Appeal Commission will issue its decision within three months of receipt of the appeal.

Yes, if the Trademark Appeal Commission refuses the appeal, the applicant may then appeal its decision by filing a lawsuit to the Commercial Court within three months of the date of receipt of the rejection. The branch of the Commercial Court with jurisdiction over the case is that at the place where the defendant is domiciled. If one of the parties is from outside Indonesia, the Commercial Court of Central Jakarta will have jurisdiction over the case. The Commercial Court’s panel of judges must rule on the case within 90 calendar days of receipt of the case. This deadline may be extended by 30 calendar days upon the approval of the chief justice of the Supreme Court.

Yes, the Trademark Law allows a third party to oppose a trademark application.

Anyone with an interest may submit an opposition against a trademark application to the Directorate General of Intellectual Property (DGIP) by submitting the opposition in writing. An opposition may be submitted if there are sufficient grounds or reasons based on which the trademark application cannot be registered or should be rejected.

The opposition to a trademark application can only be submitted during the two-month publication period. The opposition will be provided to the applicant or its proxy within 14 business days of receipt by the DGIP.

The examiner of the DGIP will review the opposition to the applied trademark application during the substantive examination process.

Within 30 business days of the expiration of the deadline to submit an objection, the examiner of the DGIP will begin a substantive examination of the trademark for which registration is sought by taking into account the submitted opposition. In case of an opposition, the substantive examination will be conducted for up to 90 business days.

Yes, the appeal must be submitted to the Trademark Appeal Commission. When submitting the appeal, the appellant must describe the reasoning for its objection to the examiner’s decision in the substantive examination. The appeal must be submitted within 90 business days of receipt of the decision.

Given that the Trademark Law adopts the ‘first to file’ rule, there is no protection for unregistered trademarks.

The trademark owner has the exclusive rights over the trademark allowing it to exclusively utilise the trademark or to authorise another party to use it.

There is no separate register for descriptive marks.

Under the Trademark Law, the owner of the trademark may file a lawsuit with the Commercial Court seeking damages or requesting the cessation of any action relating to the use of the trademark.

As in the case of trademark infringement, the trademark owner may file suit before the Commercial Court seeking damages or requesting the cessation of any action relating to trademark dilution.

The Trademark Law provides remedies only against harm caused by unauthorised use of a mark that is similar in essence or in its entirety to the registered mark.

The lawsuit must be addressed to the chief justice of the branch of the Commercial Court at the place where the defendant is domiciled. However, if one of the parties is located outside of Indonesia, the lawsuit must be addressed to the chief justice of the Commercial Court of Central Jakarta. Once the lawsuit is received, the parties will be summoned by the court. By law, the proceedings (from trial to ruling) must be completed within 90 calendar days of receipt of the case by the panel of judges; but this process may be extended for 30 calendar days with the approval of the chief justice of the Supreme Court.

The defendant can argue that:

• there is no infringement due to the lack of similarity between its mark and the registered trademarks;
• there is a minor alteration or distinction between its products and those covered by the registered trademark; or
• it has already been using the mark for years and the public knows that the mark belongs to it, despite the fact that the mark has not been registered.

A decision of the Commercial Court may be appealed directly to the Supreme Court without first filing an appeal to the high court. The appeal to the Supreme Court must be filed within 14 calendar days of the date on which the ruling of the Commercial Court is made known to the parties. The appellant to the Supreme Court must submit the memorandum of the appeal to the Supreme Court within 14 calendar days of registration of the appeal to the Supreme Court.

A registered trademark is valid for 10 years from the date of filing of the trademark application. This term may be extended for another 10 years.

An application for renewal of a registered trademark can be submitted in the six months prior to the expiry of the trademark or in the six months after the trademark has expired. If the renewal application is submitted after the expiry date, an additional filing fee will be incurred. In the application for renewal, the trademark owner must submit a written declaration stating that:

• the trademark is still in use for the relevant goods or services; and
• the relevant goods or services are still being produced or traded.

The trademark owner or its proxy may cancel the registered trademark by submitting a request to the Directorate General of Intellectual Property (DGIP), whether for a portion of the trademarked goods/services or in its entirety. A trademark registration can also be cancelled by a third party on the grounds that the trademark has not been used for three consecutive years since its date of registration or last use. However, this reason cannot be invoked if there was:

• an import embargo;
• a prohibition on the goods for which the trademark is used; or
• any other comparable prohibition imposed by government regulation.

Under the Trademark Law, there are three circumstances in which the DGIP may cancel a trademark registration on its own initiative, as follows:

• The trademark is essentially similar or identical to a geographical indication;
• The trademark contradicts state ideology, laws and regulations, morality, religion, public decency or public order; or
• The trademark is identical to a traditional cultural expression, intangible cultural heritage or name or logo that has been passed down traditionally.

A request for cancellation of a trademark registration initiated by a third party must be submitted to the Commercial Court under the grounds mentioned in question 8.3.

If the cancellation was initiated by the DGIP, the objecting party may file a claim with the Administrative Court to challenge this decision. If there is a further objection to the Administrative Court’s ruling, the objecting party can appeal to the Supreme Court.

Yes, the requirements for licensing are set out in:

• Government Regulation 36/2018 on the Recordation of Intellectual Property Licensing Agreements; and
• Ministry of Law and Human Rights Regulation 8/2016 on the Conditions and Procedures of the Recordation Application of Intellectual Property Licensing Agreements.

In principle, a trademark licence must be based on an agreement between the licensor and the licensee. For a trademark licence agreement to be valid, it must contain the following:

• the date, month, year and place where the licence agreement was signed;
• the name and address of the licensor and licensee;
• the object of the licence agreement;
• provisions on the exclusive or non-exclusive nature of the licence, including sub-licence;
• the term of the licence; and
• the geographical scope of the licence.

Also, the licence agreement must not contain provisions that could potentially:

• be detrimental to the Indonesian economy or the national interest;
• hinder Indonesians in transferring, possessing or developing technologies;
• result in unfair competition; or
• contradict laws and regulations, religious values, public decency and public order.

Yes, trademark licences must be recorded with the Directorate General of Intellectual Property by submitting:

• the licence agreement;
• official excerpts from the trademark certificate;
• power of attorney (if submitted through a proxy); and
• payment receipt for recording the licence.

No, the Trademark Law and related regulations do not govern this matter.

If the public has known for years that a foreign trademark belongs to a particular owner, the owner may file suit to the Commercial Court to request revocation of an Indonesian registered trademark, even if the foreign trademark has not been registered in the owner’s jurisdiction. In order to determine whether a trademark is well known, several factors may be considered, such as:

• the level of knowledge among or acknowledgement from the public with regard to the trademark in question;
• the volume of sales and profits obtained from use of the trademark;
• the market shares of the trademark in relation to the distribution of the goods or services in the market;
• the coverage of use of the trademark;
• the period of use of the trademark;
• the intensity and promotion of the trademark, including the investment value used for the promotion;
• registration or an application for registration of the trademark in another country;
• successful enforcement of the trademark, particularly regarding recognition of the trademark as a well-known mark by authorised institutions; and
• the inherent value of the trademark due to the protected goods/services’ reputation and quality.

Yes, as mentioned in questions 1.3 and 10.1, Indonesia has acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The procedure for foreign registration is governed under Government Regulation 22/2018, which serves as the implementing regulation to the accession.