INDONESIA NEW REGULATION ON TRADEMARK REGISTRATION AND CRITERIA ON WELL-KNOWN TRADEMARK

On 30 December 2016, the Ministry of Law and Human Rights passed Regulation No. 67 of 2016 on Trademark Registration (“Regulation 67”). Regulation 67, which became effective on 30 January 2017, provides more detailed provisions on trademark registration procedures, criteria to determine similarity of goods/services, as well as criteria on well-known trademarks. Regulation 67 does not clearly revoke Government Regulation No. 23 of 1993 on Procedure of Application for Registration of Trademarks (“Regulation 23”). Therefore, Regulation 23 is still valid to the extent that the provisions do not contradict Regulation 67, and the Ministry of Law and Human Rights has not ssued a new regulation to replace Regulation 23. Below are some of the noteworthy provisions of Regulation 67:

 

Trademark Depiction to be Filed for Three-Dimensional Trademark, Sound Trademark and Hologram Trademark

• For three-dimensional trademarks, trademark depiction should be in the form of characteristics of the trademark that provide a visual description and a description of the protection claim;
• If the trademark is a sound trademark, the trademark depiction is in the form of notation and a sound recording. For sound trademarks which cannot be presented in notation form, the trademark depiction should be in the form of a sonogram;
• For a hologram trademark, the trademark depiction is a visual representation of the trademark in several views.

 

Specification of goods or services Regulation 67 

• If there are any goods and/or services that do not belong in the applied class(es), the Trademark Office will delete the specification of those goods and/or services;
• If the applicant has put the classification of goods and/or services in error, the Trademark Office will correct the classification of goods and/or services in accordance with the prevailing law. The Trademark Office will inform the applicant about the deletion and correction within 30 days after the filing date;
• The applicant may re-file an application for goods and/or services that are deleted from the specification of goods and/or services applied for.

 

Rejection of Trademark Applications

Regulation 67 provides that a trademark application will be rejected if it has similarity in principle or as a whole to any of the following:

1. A prior registered trademark/pending trademark applications in the name of other parties for the same kinds of goods/services
2. A well-known trademark in the name of other parties for similar kinds of goods/services
3. A well-known trademark in the name of other parties for different kinds of goods/services (with certain requirements)
4. A registered geographical indication

 

Requirements of Trademark Renewal

Regulation 67 provides that an application for trademark renewal, whether electronically or non-electronically filed, must be accompanied by complete supporting documents, namely, a power of attorney and statement of use, together with payment of fees. The Trademark Office will not accept renewals without complete supporting documents.

 

Requirements and Procedures for Recordation of Change of Name or Address

Regulation 67 stipulates that a request for recordation of a change of name or address can be filed for pending trademark applications. A recordation of a change of name or address will be recorded within two months after the filing date of the request for recordation.

 

Requirements and Procedure of Recordation of Assignment of Trademark Rights

Regulation 67 provides that a request for recordation of assignment of trademark rights can be filed for pending trademark applications. A request for recordation of an assignment of trademark rights will be recorded within six months after the filing date of the request for recordation. Regulation 67 also provides that assignment of rights to a registered mark by a trademark owner who has more than one registered mark which have similarities in principle or in their entirety for similar goods and/or services can only be done if all those registered marks are assigned to the same party.

 

Transitional Provisions

Trademark applications, renewals, requests for recordation of assignment of trademark rights, requests for recordation of change of name and address, requests for registration of collective trademarks and requests for official excerpts that have been filed and processed but not yet completed before the effective date of the new regulation will be processed based on the previous regulations.

---