Indonesia is the largest economy in Southeast Asia and also a member of the G-20 major economies. Indonesia's estimated Gross Domestic Product (nominal) for 2008 was US$511.7 billion with estimated nominal per capita GDP was US $2,246, and per capita GDP PPP was US $3,979 (International Dollars). The services sector is the economy's largest and accounts for 45.3% of GDP (2005). This is followed by industry (40.7%) and agriculture (14.0%). However, agriculture employs more people than other sectors, accounting for 44.3% of the 95 million-strong workforce. This is followed by the services sector (36.9%) and industry (18.8%). Major industries include petroleum and natural gas, textiles, apparel, and mining. Major agricultural products include palm oil, rice, tea, coffee, spices, and rubber.
Who May Apply?
Trademark owners who are permanently domiciled outside of Indonesia must appoint an agent in Indonesia to make application to register a trademark.
What Can Be Registered?
Prior to the 1999 Act, the Register of trademarks was divided into two parts, Part A and Part B. However, after the 1999 Act, this division in the Register of trademarks has ceased, and now trademarks which have either inherent or acquired distinctiveness may be registered in one central Register for trademarks.
The following trademarks may be registered:
(1) a name (including a personal or family name of the applic&t or that of his predecessor in business, or the signature of an individual);
(2) three-dimensional marks;
(3) invented words or any dictionary word or words which are not directly descriptive of the character or quality of the goods or services;
(4) any combina,tion of letters and numerals, provided they have some distinctive character;
(5) any devices (logos/designs), which may include a fancy device or symbol;
(7) any combinations of colors, which may include a single color with a word or device;
(8) packaging and shapes of goods; and
(9) sound marks which are capable of being represented graphically in conventional notation or described in words.
To be registrable, a mark must also be:
(1) capable of being represented graphically;
(2) capable of distinguishing the goods or services from those of others (i.e., acquired or inherent distinctiveness); and
(3) used or proposed to be used in relation to the goods or services to indicate a connection in the course of trade between the goods or services and the person having the right to use the mark, with or without the identity of that person.
Invented or arbitrary words are thus the most likely to be registered. Personal names or family names may also be used as trademarks; and registration may be obtained therefor provided that they are distinctive. For the purpose of registration, the signature of the applicant or his predecessor in the business is considered to be prima facie distinctive. Marks for Services:
The 1958 Act provided for the registration only of trademarks for goods. However, under the Trademark Act of 1999, the registration of marks for services is allowed. "Service" as defined in this Act means services of any description that are made available to potential users. It includes the provision of services in connection with businesses of any industrial or commercial matters such as, for example, banking, communication, education, financing, insurance, chit funds, real
estate, transport, storage, material, treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, constructions repair, conveying news or information, and advertising.
What Cannot Be Registered?
A trademark shall not be registered if:
(1) the application is made in bad faith;
(2) the application is contrary to prevailing laws and regulations, religious morality, decency, or public order; (3) the mark is not distinctive;
(4) the mark is in the public domain; or
(5) the mark is descriptive or related to the goods or services applied
A mark may be rejected if:
(1) it is similar in principle or in its entirety to a prior registered
trademark owned by another party in respect of similar goods
(2) it is similar in principle or in its entirety to a well-known
trademark owned by another party in respect of similar goods
(3) it is similar in principle or in its entirety to a well-known trademark owned by another party in respect of dissimilar goods andlor services provided that requirements stipulated by Government Regulations are fulfilled;
(4) it is similar in principle or entirety to known geographical indication;
(5) it is or resembles the name of a famous person, photo, or name of a legal entity owned by another person unless written approval from the rightful person is obtained;
(6) it is an imitation of or resembles a name or is an abbreviation of a name, flag, coat of arms, or logo or emblem of a state, national, or international agency unless written approval from the rightful authority is obtained; or
(7) it is an imitation of or resembles a sign or official seal used by a state or a government agency unless written approval from the rightful authority is obtained.
Third parties may file objections to an application for a mark and may bring actions for cancellation and for deletion of the mark from the General List of Trademarks
The following items are required for registration:
(1) the prescribed application form, signed by the applicant or his agent, containing:
(a) the date, month, and year of the application;
(b) the full name, citizenship, and address of the applicant;
(c) the full name and address of the agent, if an agent is appointed;
(d) the color(s) of the mark, if the application is made for color elements;
(e) the class and type of goods or services to which the mark refers; and
(f) the name of the country and date of the first application, if priority is claimed.
(2) a simply signed Declaration of Ownership stating that the trademark for which registration is applied belongs to the applicant;
(3) twenty four representations of the mark;
(4) a legal copy of the applicant's deed of establishment or an extract of the relevant state register containing the deed of establishment, if the applicant is an Indonesian corporation;
(5) a power of attorney (if the application is submitted by an agent). An applicant residing or having its permanent domicile outside Indonesia must make the application through an agent domiciled in Indonesia;
(6) a receipt of the payment of the application fee;
(7) if the representations of the mark use a foreign language or contain characters other than roman characters or figures other than those commonly used in Indonesian, a translation into Indonesian and transliteration of the characters in Latin alphabets must be provided; and
(8) priority documents: a certified copy and a sworn translation of the priority document must be filed within three months following the expiry of the priority deadline. If an assignee applies, a copy of the legalized deed of assignment is required.
Evaluation & Review
An application must be limited to one class of goods or services. Applications are subject to both formal and substantive examination. Upon receipt of the application, the Trademark Office will examine the application for compliance with the formal documentary requirements. During a two-month period running from the date of receipt of the Trademark Office request, applicants are allowed to rectify omissions in the application. Where the application is incomplete because priority documents are missing, the applicant has a period of three months following the expiry of the priority deadline to supply the missing documents. A filing date is granted based on the date the application has become complete.
The application is substantively examined within 30 days following the date of filing of the application, and such examination must be completed within nine months. If the application is cleared for registration following the examination, the application is then advertised in the Official Trademark Gazette. Where the Examiner raises objections to or citations against the registration, an examination report is issued to the applicant. The applicant may then file submissions to respond to the examination report within 30 days following the receipt of the report. In the absence of any response from the applicant within the stipulated deadline, a notice rejecting the application is issued.
Where the applicant's submissions successfully overcome the objections and/or citations raised, the application is advertised in the Official Trademark Gazette. Where the applicant's submissions do not overcome the objections and/or citations raised, a notice rejecting the application is issued.
No later than 10 days after the application is approved for registration, the application will be advertised in the Official Trademark Gazette. The announcement is posted for three months, during which oppositions may be made. Upon expiration of the announcement and opposition periods, the Trademark Office will reexamine the application. If the application is approved, the mark is entered into the Trademark Register and a trademark certificate is issued. If the application is not approved, a notice of rejection will be issued and the applicant may file an appeal before the Trademark Appeal Commission within three months following the date of receipt of the notice of rejection.
A registered trademark is protected for a period of 10 years, retroactive to the date on which application for registration was received by the Trademark Office. Upon request from the owner before the Trademark Office, a registration may be extended for an additional 10 years. Applications for renewal must be submitted at least 12 months before expiry of the protection period. The extension will be approved if the relevant mark continues to be used on the goods and services for which it was registered and such goods and services are still produced and traded.
The extension shall be rejected if the trademark is similar in principle or in its entirety to a well-known trademark owned by another party in respect of:
(1) similar goods and/or services; or
(2) dissimilar goods and/or services; The rejection of an extension shall be notified in writing to the applicant. The applicant may appeal the rejection to the Commercial Court. A Cassation Appeal may be filed against a decision of the Commercial Court. The extensions of the protection period of a registered trademark are recorded in the Trademark Register and published in the Official Trademark Gazette.
Marks not used within a period of three years following registration may be cancelled or deleted from the General List of Trademarks.
The registration of domain names in Indonesia is administered by Indonesia Network Information Center (IDNIC). Domain.id includes:
(1) .web.id for person or entity engaged in e-commerce;
(2) .sch.id for an educational institution;
(3) .go.id for a governmental institution;
(4) .war.net.id for the owner of "Warnet" (Internet cafe);
(5) .acid for a university which provides at least a diploma program;
(6) .co.id for a company with a valid/legalized business operating permit or other valid~legalizedd eed of incorporation or a foreign company with a registered trademarwpending application in Indonesia;
(7) .net.id for a company that owns a business license as an internet service provider;
(8) .mil.id for the military army; and
(9) .or.id for any organization which is not classified in "ac.id," "co.id," "go.id," "mil.id," "net.id," etc.
An Indonesian or joint venture company may receive a ".co.idn domain name that is the same as its company name or trademark by submitting:
business license, company tax identification number, company registration documents, trademark registratiodapplication. A foreign company may obtain a ".co.idv domain name which is the same as its trademark if:
(1) the company owns a trademark registration or pending application in Indonesia;
(2) the proposed domain name is identical to the trademark registered or applied for; and
(3) the company has a representative office in Indonesia.
Currently there is no dispute mechanism for Indonesian domainname registrations.
An individual who knowingly and without right uses a mark that is similar in entirety to a registered mark for similar goods and services is subject to a maximum jail term of five years and a fine.
An individual who wrongfully and without right uses a mark that is similar in principle to a registered trademark for similar goods and services is subject to a maximum jail term of four years and a fine. The owners of a registered trademark may bring suit in the Commercial Court against a third party for unauthorized use of a mark that is similar in principle or in its entirety to the registered mark and is used for similar goods or services. Registered licensees may also bring an infringement action, either individually or with the trademark owner. Where the defendant resides outside Indonesia, the action must be filed before the Commercial Court in Jakarta. The Commercial Court must issue a decision within 90 days following the date of the filing of the action. This deadline may be extended for no longer than 30 days with approval of the Supreme Court. Upon request of the owner or registered licensee, courts may issue
interim injunctions against trading in goods or services bearing the mark and orders to preserve evidence. Infringers may also be ordered to surrender infringing goods. An appeal against the decision of the Commercial Court is.by way of cassation, a form of annulment action.
As an alternative to filing a trademark infringement action in the Commercial Court, parties may choose to settle the dispute through arbitration or alternative dispute resolution.