With the introduction of new regulations for the protection of different elements of Intellectual property, such as Patent, Trade Mark, Industrial Design, Copy Rights and Plant Variety Protection, Indonesia has established a wide-ranging system for the protection of IP over the past few years. But in spite of these efforts, there are some loopholes to fill and the Indonesian Government is endeavoring to do so.
Since the issuance of Government Regulation No. 19 Year 2007 concerning the Amendment of Regulation of the Republic of Indonesia No. 75 Year 2005 concerning Tariff of Non-Tax National Income at the Department of Law and Human Rights, the Indonesian Trade Marks Registry has started to receive trademark applications using the Multi-Class System. The acceptance of Multi-Class applications can be considered to be an improvement in the Indonesian trademarks practice, however, there are several aspects of the system that need to be improved before full implementation takes place in Indonesia.
As Government Regulation No. 19 Year 2007 now determines the official fees for filing trademark applications with multi-class system the Indonesia Trade Marks Registry now accepts trademark applications with multi-class system, which was impossible in the past due to the non-existence of the regulations relating to the multi-class system.
Although the Indonesia Trademark Office now accepts trade mark applications with Multi-Class system, up to this moment the Indonesian Government has not issued further implementing regulations relating to standards and guidelines regarding the requirements and procedures for the Multi-Class applications, such as the examination proceedings, time frame for examination, granting, etc. In view of this there is a possibility that the multi-class applications that have been filed at the Trademark Office may not be able to proceed or be granted until the Indonesian Government issues further government regulations on the same.
Despite the lack of implementing regulations, many applicants have filed multi-class trademark applications. Should the applicants have a straightforward case, i.e. there are no objections raised for all the applied class, then there is no problem as their applications can then proceed directly to publication. In fact there are several multi-class applications that have been published in the Official Trade Mark Gazette within this year.
However, the problem arises where an objection raised against one or more of the several classes applied for, as the examiners do not have any guidance on how to divide the applications or to subsequently proceed with the examinations. The same problem will also be faced if a third party opposes one of the classes within the publication period. These situations could cause the applications to be pending for an undetermined length of time.
Furthermore, it should be noted that the aforesaid Government Regulation only determines the Official Fee for Application and does not provide any official fee for the Renewal of multi-class trademarks registrations. Therefore, even though by chance the Trade Marks Registry grants the multi-class trademark applications, the said registration may have a problem being renewed until the issuance of another Government Regulation regulating this.
In view of the above, for the moment, at least until the Indonesian Government issues Government Regulation which comprehensively regulates the requirements and procedures for trademark applications with multi-class system, it is advisable to file the regular trademark applications with single class system, which already have clear grounds regarding the requirements and proceedings.
Recordal of Trade Mark License Agreement
A similar problem as faced in the recordal of trademark licenses as Indonesian law does not provide clear guidance on the same. However directions may be taken from the provision of Article 43 paragraph (3) of Trade Mark Law No. 15 Year 2001 that it is compulsory to record trade mark license agreements with the Directorate General of Intellectual Property Rights, failing which the license agreement shall not bind any third parties.
As such, the requests for the recordal of a trade mark license agreements remain pending with no certainty as to when the recordal will be endorsed by the Registry. For the time being, parties that have filed their request will have to rely on the Official Filing Receipts of the Recordal as legal evidence on the Recordal itself, in order to have their License Agreement legally binding against any third parties.
Well-Known Marks and Passing Off
Unlike Common Law, Indonesian trademark regulations do not acknowledge the concept of passing off. Consequently, only the proprietor of a registered trademark can only obtain protection for their trade marks based on the trademarks regulations.
The prevailing trade mark regulation does acknowledge well-known marks as can be seen in Article 6 paragraph (1) letter b, Article 6 paragraph (2) and Article 37 paragraph (2), whose protection covers dissimilar classes. However, the aforesaid provisions pertaining to well-known marks are considered as vague and inadequate. Up till now, there are no precise guidelines as regards to the criteria of well-known marks.
As a result, many proprietors of well-known trademarks who have not had their marks registered in Indonesia feel the impact of this situation. There’s nothing much they can do to enforce their rights as proprietors of well-known trade marks against other parties who imitate their marks and infringe their rights. In view of the said circumstance and the fact that Indonesia adopts the first-to-file system, it is very important for the proprietor of well-known trade marks to take active steps to have their marks registered in Indonesia.
The Future Outlook
The Indonesian Government is not oblivious to the necessary changes to be implemented in the current trade marks system and regulations, as well as the situation caused by them. The Indonesian Government has prepared a draft of Government Regulation concerning well-known marks. This draft regulation will give further guidelines on the criteria of well-known marks, such as public recognition and knowledge on the mark in concern, prior registration of the marks in various countries worldwide, incessant promotion by the trade mark owner and use of the mark for a definite length of time. However, the trademark owners and other stakeholders need to be patient, as the endorsement of Government Regulation concerning well-known marks have been postponed, pending the endorsement of the Revision of Trade Marks Law No. 15 Year 2001. These new trademarks regulations will give better protection to rightful owners of well-known trademarks and can lead Indonesia to have a better trademark system.