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LEGISLATION UPDATE

Not long after the promulgation of the new Patent Law No. 13/2016 on August, 26, 2016 which has brought in hassles to many of local patent attorneys and patent holders caused by the controversial issues particularly with respect to the new annuity payment calculation system, the Indonesian Government in harmonization to global economy trend all at once to keep up with the international standards as signatory country to the Madrid Protocol, enforced the new Trademark Law No. 20/2016 effective as from November 25, 2016 amending the previous Law No. 15/2001.

The new law has introduced non-traditional trademarks to include “sound”, “hologram” and “three (3) dimension” trademarks acceptable for protection other than traditional trademarks (Article 1 par 1). Other new issues and significant changes to the local trademark practice under this new law are highlighted below:

  1. Minimum Filing Requirement (Article 13)

In order to obtain earlier filing date, it is sufficient for an applicant to simply submit application form and trademark label or representation against payment of the official fees. Other documents i.e. PoA & Declaration of Entitlement, such which are used to be required at the time of filing under the old law, may follow at the later stage after the application is placed on file.

  1. Publication for Opposition (Article 14)

As time frame in registration process is essential and becoming trademark’s owners most concerned in all jurisdiction, the new law reverses the stage of publication to come first prior to substantive examination stage. Such publication shall last only for two (2) months for public inspection within 15 days after the application is placed on file.

  1. Ground for Refusal (Article 20 & 21)

Reasons for refusal within the nature of Absolute Ground (Article 20) remain the same as defined in the previous law. New inclusion is occurred only in the Relative Ground (Article 21 par 1 & 2) namely:

  • Being confusingly similar to or identical with a prior registered geographical indication;
  1. Time Frame to Get a trademark Registered

A smooth process of registration is supposed to take about seven (7) months and ten (10) days from filing to registration, unless something unforeseen (e.g. opposition) comes up on the way.

  1. Renewal (Article 35)

Application for renewal may be lodged at anytime provided no earlier than six (6) months before the expiry date of registration. Yet, it may be filed later within six (6) months grace period after the expiration date against payment of double official fees.

  1. Recordal of Trademark Assignment (Article 41)

Assignment of pending trademark application is now recordable. Likewise, any modification of record resulted from either changing in owner’s name or address can be recorded upon pending and registered trademark both.

  1. International Trademark Registration via Madrid Protocol (Article 52)

Anyone who wishes to get its trademark registered in several countries may simply file an application through international route under the Madrid protocol. The Implementing Government Regulation to get this international registration to come into practice in Indonesia would have to be awaited further, though.

 

 

—– January 2017 ——

author

S.L. Sitanggang

Not long after the promulgation of the new Patent Law No. 13/2016 on August, 26, 2016 which has brought in hassles to many of local patent attorneys and patent holders caused by the controversial issues particularly with respect to the new annuity payment calculation system, the Indonesian Government in harmonization to global economy trend all at once to keep up with the international standards as signatory country to the Madrid Protocol, enforced the new Trademark Law No. 20/2016 effective as from November 25, 2016 amending the previous Law No. 15/2001.

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