1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that it allows others to register an identical or similar mark that could impede the ability to use or register the mark in Indonesia. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is compulsory to establish rights to a mark. In the absence of registration, it is not possible to: (1) prevent application for a similar mark; (2) expunge unauthorized registration of the mark; or (3) prevent unauthorized use by a third party, except in the case of a well-known or famous mark.
3. What is registrable?
Distinctive names, devices, words or characters, pictures, symbols, or their combinations may be registered as trademarks or service marks.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
Domain names may be registered under the country level domain .id. There are no laws regarding domain name registrations in Indonesia. However, unauthorized adoption of somebody抯 trademark for use as a domain name is basically actionable under the Indonesian Trademark Law and the Law on Anti-Monopoly & Unfair Business Practice, provided there are the elements of 揵ad faith?and/or use associated with the sale or offer for sale of particular goods or services.
6. Should a trademark be searched before filing?
Under certain circumstances, a prefiling search can be of some advantage in discovering senior registrations; however, the result of a prefiling search is not binding, since the issue of similarity will depend on the subjective interpretation of the examiner.
7. How do I file?
Foreign applicants must file an application via a local trademark agent appointed as their proxy.
8. What information must be provided before filing?
Before filing, the applicant must provide: full details of the applicant (name, nationality and address); details of the mark with 20 specimens; a list of goods or services; a duly executed power of attorney; a declaration of entitlement; and a certified copy of priority document (if convention priority is claimed).
9. Is local registration the only option, or are there international alternatives?
Yes, only the local registration is enforceable.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
Yes. A separate application must be filed for each class of goods or services. But under the 1997 Revision Act, a multiclass application shall be acceptable, though it is not enforceable until implementing regulations issue.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding an Indonesian application, the filing date of the home application can be claimed as the filing date in Indonesia. For more details, consult an Indonesian trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within three years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse. Resumption of use does not cure nonuse.
13. Is using a variation of the trademark allowable?
Currently, the mark in use must be exactly the same as the is registered mark and no slight difference can be tolerated, otherwise the mark becomes vulnerable to nonuse attack.
14. Is there any advantage to using a trademark before filing an application?
In view of the pure 搑egistration-based system?adopted by Indonesia, there is no advantage to using the trademark before filing an application.
15. For an application to be valid, are there any particular requirements that must be met?
Yes, the applicant must be a bona fide and rightful proprietor of the mark as set out in the Declaration of Entitlement.
16. What information is first published about an application/ registration and when is it published?
All information relating to a trademark application such as the name of the applicant, the mark and the designated goods/services, etc., will be published ten days after the application is allowed.
17. What kind of examination (if any) will a new application undergo?
There are two stages of examination: (1) formal examinatio: to ascertain that the application has satisfied the filing requirements procedural, such as filing a request form, power of attorney, declaration, etc. as well as payment of filing fee; and (2) substantive examination, dealing with the issues of registrability and availability.
18. What response to official objections is required?
Objections should be answered within two months. If the deficiency is due to missing priority documents, the response time is three months. It may be necessary to amend the list of goods/services of the application. An applicant dissatisfied with a rejection may appeal within three months of the notice of rejection to the Appeal Commission for Trademarks.
19. How long is the registration process?
The registration process takes approximately 13 to 15 months.
20. What rights does an application confer?
A senior application can be cited against a subsequent conflicting application. Subsequent applications can be opposed. Rights begin on the filing date.
21. What is the legal effect of a registration?
A trademark right is created by registration. Registration entitles the registrant to file infringement actions against unauthorized users, to oppose subsequent applications, and to cancel subsequent registrations. It enables the registrant to obtain an injunction against unauthorized use and to seize the goods. After five years, the registration may not be invalidated based only on reasons such as lack of distinctiveness, similarity to a prior registered mark, or confusion as to origin of goods, except on the grounds of 損ublic order.?/span>
22. Can an application be opposed or cancelled by third parties?
Yes. An opposition may be filed by any person within three months from the date of publication of the application.
23. Can an application or registration be assigned?
Only registrations are assignable. Consult an Indonesian trademark attorney.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Recordation is compulsory to establish the right of the assignee to the trademark.
26. Can an application or registration be licensed?
Only registrations can be licensed. Consult an Indonesian trademark attorney.
27. Does a license have to be recorded?
Recordation of a trademark license is compulsory.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Indonesia.
29. How long does a registration last?
The term of registration is ten years from the filing date, and is renewable for like periods.
30. What is required to renew a registration?
A renewal application should be filed 12 months before the registration expires and be supported by a declaration of use. Reclassification on renewal will be necessary only upon receipt of official notification from the Trademark Office.
31. Is it necessary to indicate a trademark registration on goods or services?
Yes. Marking is compulsory.
32. Does the International Classification System apply?
Yes. Indonesia, however, has also adopted its own classification system for goods that are not listed in the international system.
33. Is your national office accessible online?
No. |
