5 Reasons Why Appointing an IP Consultant When Filing Trademark Application is Still Crucial Even for the Local Applicants?

If you file a trademark application in other countries as a foreign applicant, it is a no-brainer for you to understand that you would need a local trademark attorney or proxy or an IP Consultant to represent you in filing a trademark application to the local PTO on your behalf.

Most jurisdictions require foreign applicants to elect domicile at their local proxy’s address for official communication and billing purposes.

But what about the locals? Do they understand that they also would need IP Professional assistance to help them in the trademark filing matter?

This article will discuss the reasons why it is necessary – and even unavoidable – for local applicants and foreign applicants alike (which is obvious) to appoint an intellectual property consultant (i.e. proxy) for filing their trademark application in Indonesia.

Indonesian Trademark Law allows local applicants to file trademark applications themselves or through registered intellectual property consultants on the applicants’ behalf. Foreign applicants, on the other hand, are required by the law to file their trademarks through local representation.

For years, local applicants can manually file their trademark by directly visiting the DGIPR Office with simple personal or business identification documentation along with simple application forms. If they live in other parts of Indonesia, they can do it through DGIPR Regional Offices in their respective areas, or through a proxy that would file their application on their behalf to the DGIPR Office in Jakarta.

Manual paper filing abruptly ended when the Covid-19 pandemic started and from there on, the electronic filing system which has been implemented several years earlier becomes the only option to file trademark applications in Indonesia.

In fact, based on the Directorate General for Intellectual Property’s 2020 Yearly Report, 100% of all trademark applications filed in 2020 have been submitted through the DGIPR E-Filing system.

This should be very encouraging for the development of a more efficient trademark filing management system in Indonesia. Such development also implies that more people, including the local applicants, are now ready (or forced to be ready) to use the e-filing system, are they not?

Just like any other digital transactional platform for any other purposes, DGIPR web-based trademark e-filing system can be understood by first learning the downloadable manuals and video tutorials which are available on the DGIPR website. 

Anybody can learn how to use the e-filing system in their own time and subsequently file their trademark application at their fingertips in the comfort of their home or office.

To be honest, however, the interface of the web-based trademark e-filing system is not that user-friendly and there is a learning curve you need to tap into before you can have a good grasp on how to proceed with filing a trademark application electronically by yourself.

Anyways, it’s not about the of technical knowledge of submitting e-filing a trademark application that matters. The problem on the part of local applicants is the lack of substantive knowledge for filing a trademark application itself. 

Many local applicants who file their trademarks without professional assistance, don’t really understand what is trademark distinctiveness, what is descriptiveness, how to respond to an office action, what are the important deadlines, etc.

The lack of proper understanding of trademark matters has led many local applicants to unsuccessful trademark registration which costs them a lot of time and money and even hurts their own business.

Here-below are some examples of what kind of “trademarks” that local applicants have been filing through the e-filing system these days:

While “bakso” (meatball) and “mie” (noodles) are favourite food in Indonesia, the local applicants seem to be unaware that their proposed marks are merely descriptive of the goods of the “trademark” being applied for. 

The above marks are now either in the process of proposed rejection by the examiners for the reason we know why, or just being filed recently in the e-filing platform.

Many local applicants have been filing trademarks without proper guidance and advice from intellectual property consultants. 

We can only tell what the future holds for their trademark applications with so much time and money that has been wasted, not to mention the potential damage caused to the business itself. 

This is a sad reality when you have a sophisticated e-filing system that allows local applicants to file directly their trademark applications, some clueless applicants are left alone with zero knowledge of what makes their trademark application a success or failure.

Law Of The Republic Of Indonesia No. 20 Of 2016 Concerning Marks And Geographical Indications regulates that a trademark application can also be filed through a Proxy.

A proxy is an authority to represent someone else. A proxy may also refer to a person who is authorised to act for another person or it may designate the function or authority of serving in another’s stead.

Under Indonesian Trademark Law, a Proxy is an intellectual property consultant who resides or has a permanent domicile in the territory of the Unitary State of the Republic of Indonesia.

Intellectual Property Consultant is a person who has expertise in the field of intellectual property and is registered as an Intellectual Property Consultant and specifically provides services in the field of submitting and managing intellectual property applications.

The Trademark Office requires the Applicant to appoint an IP Consultant in place of the Applicant for official communication and billing purposes in relation to the Applicant’s trademark application and to receive or collect Trademark Registration Certificate on Applicant’s behalf.

It is mandatory for foreign applicants to appoint an Indonesian IP Consultant as their domicile and local representative, whereas the local applicant they can still file independently file their trademark application, and we will tell you in a moment why it is not wise to do so.

That’s just my two cents, of course. I admit that there are big companies in Indonesia that have adequate expertise and resources to register successfully their trademarks on their own without the need for advice or assistance from IP Consultants.

What we are considering here is about helping the local applicants in Indonesia which are mostly individuals or small to medium business owners, navigate their way to successful trademark registration.

The following are at least 5 reasons why applicants (local or foreign) would need the assistance of IP Consultants when filing their trademark application.

When an Applicant makes contact with an IP Consultant for the proposed filing of their trademark application, the IP Consultant shall first ask the Applicant to provide him or her with the specimen of their trademark along with the description of goods and or services for that trademark that the Applicant has been using or intend to use.

An IP Consultant shall basically analyse if the proposed mark is inherently distinctive enough to be registered and protected as a trademark. He or she shall consider if the proposed description of goods and or services are rightly falling into the correct class or classes, or if additional classes are needed.

An IP Consultant shall also conduct an assessment if the proposed goods or services will be considered descriptive or not to the proposed mark. This is a substantially crucial analysis that can determine if the proposed mark can be registered or not.

To provide Applicant with proper advice on the chances of success of the proposed mark in the registration process, the IP Consultant shall subsequently suggest that a preliminary trademark search at the PTO databases be conducted.

A preliminary trademark search is very important to assess the possible conflicts with the existing similar marks on the relative ground. Based on his or her expertise and experience, the IP Consultant will be in a position to advise applicants with a calculated risk assessment should they still want to proceed. Or, if some further alteration or adjustment is needed to increase the chances of success of the proposed mark.

These initial steps alone can save the Applicant’s time and money from cluelessly filing a trademark application with too little or no chances of success.

Incomplete or invalid fulfilment of formality will result in the unnecessary delay of a supposedly smooth trademark registration process. 

In the past, such delay could be an extended delay with no clear solution if Applicant was not aware that such delay had happened. 

It is the job of an IP Consultant to make sure that every requirement is met and every procedure is followed in the correct format to satisfy the formality requirement and examination. 

Pending trademark application involves multiple stages which take many months to complete. You really can’t afford to have another delay in an already long and time-consuming process just because of some trivial oversight.

In a “not so smooth” pending trademark application and registration process, sometimes Trademark Office issues communications or office action to the Applicant requiring further completion, clarification, response or rebuttal.

Most local applicants who are individuals and small to medium businesses are not prepared to consider such official communication, let alone prepare and submit a proper response. They would need some assistance in considering the substantive matter communicated by the Trademark Office and filing the correct format of communication in due time.

IP Consultant has the resources to obtain such important communication as soon as it is issued, to notify Applicant regarding the matter with recommended action, and to prepare an editable template response for duly submission to the Trademark Office.

Trademark matters involve many deadlines to meet. There are deadlines for pending trademark applications, deadlines for renewing trademark registrations, deadlines for submitting a declaration of use or evidence of use, deadlines for appeal and other court proceedings, deadlines for paying annuities etc.

Applicants are busy people with a busy schedule running their businesses and developing their brands. Keeping records of deadlines and preparing the necessary actions are simply too overwhelming and too distracting for them. 

Most IP Consultants have invested a great amount of time and money to develop and maintain their own proprietary database for the portfolios of their client’s trademarks and other IP assets, which allows a seamless connection between their day-to-day workflows with the impending deadlines of their client’s portfolio.

Entrusting your trademark portfolio to an IP Consultant is a wise choice because it will give you peace of mind knowing that it is an IP Consultant’s job to keep records of your trademarks’ important deadlines, and to prepare and execute the necessary actions accordingly.

Registering a trademark is a part of brand building which everybody knows will involve a lot of time and money. Accurate and reasonable budgeting is, therefore, really sought after by most brand owners.

IP Consultants with their transparent regularly updated schedule of fees will help Applicant in budgeting their IP campaigns locally and abroad. 

By filing a trademark application correctly in the first place, and with the help of an IP Consultant, the Applicant will be able to save a lot of time and money avoiding unnecessary errors and delays in managing the registration and protection of their trademarks. 

Indonesian Trademark Law allows local applicants to file trademark applications themselves or through registered intellectual property consultants on the applicants’ behalf. Foreign applicants, on the other hand, are required by the law to file their trademarks through local representation.

The local Applicants who file their trademark applications by themselves often face difficulties in having their trademark registered because of the lack of substantive and basic knowledge of trademark registration.

The local Applicant might want to save cost and time by not involving IP Consultant to help them file their trademark correctly, but such preference has led to eventual failure in registering their trademark because it is not done correctly in the first place.

We hope that more and more local applicants will be aware of the importance of IP Consultants just like they are already aware that it is necessary to involve and entrust professionals in other areas who have expertise in their respective fields, and who can guide them in the right direction.

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