In this FAQ, we listed here below the most frequently asked questions concerning intellectual property rights in Indonesia. You may also check individual pages on trademarks, patents, industrial designs, and copyrights. There is also a dedicated page regarding Intellectual Property Rights in Indonesia. If you still have any questions or doubts, please do not hesitate to contact us by email at info@pwplaw.co.id
Trademarks
What is a Trademark?
Trademark is a sign shown graphically in the form of a picture, logo, name, wording, letter, number, or compositions of colours, in 2 (two) dimensional forms and/or 3 (three-dimensional form, voice, hologram, or combination from 2 (two) or more of such elements to distinguish products and/or services produced by an individual or legal entity in the trading of goods and/or services activities.
Is it necessary or advisable to register trademarks in Indonesia?
Trademark protection is obtained through registration, based on the “first to file” principle. Therefore, a trademark registration must be filed in Indonesia to get exclusive protection.
Which authority registers trademarks in Indonesia?
Directorate of Trademarks and Geographical Indications at the Directorate for Intellectual Property Rights of the Ministry of Laws & Human Rights of the Republic of Indonesia.
What are the required documents for submitting a trademark application?
To register a trademark, the applicant must submit the following documents and information to the Directorate of Trademarks and Geographical Indications:
A trademark application must include the:
- full name, address and nationality of the applicant’s data;
- colour of the mark (if the requested trademark contains a colour element);
- country and date of first acceptance of the application, if the applicant claims priority rights; and
- goods and/or services classification, and their description.
- An original power of attorney.
- Labels/specimens of the trade mark (if any).
- An original declaration of ownership.
- Priority documents, if the applicant claims a priority right.
- Details of the relevant class(es) and specification of goods and/or services under the WIPO Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957.
- Characteristics of three-dimensional marks (if applicable). Musical notation and recording, in the case of a sound mark.
Why some trademark applications cannot be registered?
Trademarks that cannot be registered are those that:
- are contrary to state policy, applicable laws and regulations, morality, religion, decency, or public order.
- Are similar to, related to, or explicitly state the name of the goods and/or services classification to which they apply.
- Contain misleading elements to the origins, quality, type, size, classification, or purpose of the goods and/or services.
- Contain false information on the quality, benefit, or purpose of the relevant goods and/or services.
- Do not contain any distinguishing features.
- Have become generic.
- Contain functional forms.
Why Trademark Office rejects a trademark application?
a trademark application must be rejected if the requested trademark is similar or identical to:
- A prior trademark registered or filed by a third party in relation to the same goods and/or services.
- A well-known trademark owned by a third party for the same goods and/or services.
- A well-known trademark owned by a third party in relation to different goods and/or services, that does not satisfy certain requirements.
- A registered geographical indication.
- A famous person’s name or photograph, or the name of a legal entity owned by a third party, except if the written consent of the relevant person has been obtained.
- The name or abbreviation of the name, flag, emblem or symbol of a state or a national and international institution, except on written approval of the competent authority.
- The mark, seal or official stamp used by the state or government agencies, except on written approval of the competent authority.
On what grounds can third parties oppose a trademark application?
Based on Trademark Law, third parties can file an opposition on the following grounds:
- similarity to prior registration for similar goods/services,
- similarity to a well-known mark for similar or dissimilar goods/services,
- bad faith, and/or
- similarity to a legal entity name (Jika merek tersebut merupakan bahagian essential dari entity name)
When can third parties oppose a trademark application?
Opposition to a trademark application can be filed during the two-month publication period.
When does trademark protection start and how long does it last?
Trademark protection is valid for ten years from the filing date and is renewable.
On what grounds can a trade mark infringement action be brought?
A trademark holder or licensee can bring an infringement action against any party that unlawfully uses a similar or identical trademark for the same type of goods and/or services.
Which courts deal with trademark infringement actions?
The district courts have jurisdiction to hear trademark infringement cases.
Is there a fast-track and/or a small-claims procedure?
There is no fast-track or small-claims procedure for trademark infringement actions.
What are the defences to trademark infringement actions?
There are no specific defences provided under Indonesian trade mark law. However, in practice, defendants may use the following defences:
- The trade mark is registered.
- The alleged infringer’s trade mark is not similar to other registered trademarks.
What are the remedies in trademark infringement actions?
In the case of trademark infringement, the trade mark owner can claim a justifiable amount for compensation. Under criminal law, the infringer may be sentenced to pay a fine ranging from IDR2 billion to IDR5 billion.
What are the requirements for the recordation of trademark assignment?
The requirements for the recordation of trademark assignment are as follows:
- A simply signed Power of Attorney signed by the Assignee (No legalization required)
- A simply signed Declaration of Use signed by the Assignee (No legalization required)
- The Deed of Assignment signed by the Assignor and the Assignee (Notarized by Notary Public)
What are the requirements for the recordation of a change of name for a trademark?
- Power of Attorney (simply signed)
- Document of change of name (notarized)
What are the requirements for the recordation of a change of address for a trademark?
Power of Attorney (simply signed)
Can taglines or slogans be filed as trademarks? If possible, how?
Trademark Law does not explicitly regulate taglines or slogans. However, in practice, as long as said taglines or slogans have a strong distinguishing power and meet the requirements stated in the law, some of them can be registered in the Directorate General of Intellectual Property Rights.
Given the above, you can consider filing your taglines or slogans for your relevant goods and/or services related to your marketing and promoting materials.
What are the remedies in trademark infringement actions?
The owner of the registered mark can take actions in accordance with the following provisions in accordance with the Law of Trademark & Geographical Indications:
The owner of a Registered mark and/or the Licensee of a registered Mark may file a lawsuit against the counterparty who unrightfully utilises a Mark which has similarity in its essential or its entirety for goods and/or services of the same kind, in a form of:
a. Damages lawsuit, and/or
b. Termination of all acts that related to the utilization of Mark hereto.
What are the criminal provisions against trademark infringement?
(1) Every person who unrightfully uses a Mark that is identical in its entirety to a Mark owned by another person for goods and/or services of the same kind which produced and/or traded, shall be sentenced to imprisonment for a maximum of 5 (five) years and/or a fine for a maximum of Rp. 2,000,000,000.00 (two billion rupiahs).
(2) Every person who unrightfully uses a Mark which have similarity in its essentiality with a registered Mark owned by another person for goods and/or services produced and/or traded, shall be sentenced to imprisonment for a maximum of 4 (four) years and/or a fine for a maximum of Rp. 2,000,000,000.00 (two billion rupiahs).
(3) Every person who violates provisions as stipulated by paragraph (1) and paragraph (2), that the kind of goods affects health problems, environmental problems, and/or human death, shall be sentenced to imprisonment for a maximum of 10 (ten) years and/or a fine of maximum Rp. 5,000,000,000.00 (five billion rupiahs).
(4) Every person who trades goods and/or services and/or products known or should allegedly know that the said goods and/or services and/or products are the result of a criminal act as stipulated by Article 100 and Article 101 shall be sentenced with imprisonment for a maximum of 1 (one) year or a fine for a maximum of Rp. 200,000,000.00 (two hundred million rupiahs).
Patents
What is a Patent?
Patent is an exclusive right granted by the State to an inventor for his invention in the field of technology, for a certain period, to exploit his invention or to authorize another party to exploit it.
Which inventions cannot be patented?
Inventions that cannot be patented are:
· Products or processes which are contrary to law, religion, public order or morality.
· Methods of examination, treatment, medication and surgery applied to humans and/or animals.
· Theories and methods in the field of science and mathematics.
· Living creatures, except micro-organisms.
· Biological processes that are essential for the production of plants or animals, except microbiological or non-biological processes.
What are the required documents for patent registration?
· A scanned copy of original power of attorney.
· A scanned copy of original declaration of invention.
· A scanned copy of original assignment of invention, duly executed by the inventor(s) and applicant(s), if the applicant(s) is/are not the inventor(s).
· Patent specification. This must include the following:
a) claims of the invention: the claims must consistently and clearly explain the invention and be supported by a description of the invention;
b) description of the invention: the description of the invention must clearly explain how the invention can be implemented;
c) abstract: a summary of the patent specification; and
d) drawings (if any)
· A scanned copy of a certified true copy of the priority document (if filed by claiming priority right).
Additionally:
· The claims must consistently and clearly explain the invention and be supported by a description of the invention.
· The description of the invention must clearly explain how the invention can be implemented.
· If the invention relates to or originates from, genetic resources or traditional knowledge, the description must explicitly refer to the genetic resources or traditional knowledge.
· Modifications of the description or claims are possible as long as they do not expand the scope of the invention.
When does patent protection start and how long does it last?
Patent protection is valid for 20 (twenty) years from the filing date.
The protection period for simple patents is 10 (ten) years from the filing date.
What are Exclusive Rights on Patents?
Exclusive Rights are only granted to the Patent Holder for a certain period of time to exercise themselves commercially or grant further rights to others. Accordingly, other parties are prohibited from executing such Patents without the consent of the Patent Holder.
What are the reasons for the transfer of the Patent?
- Inheritance
- Grants
- Testamentary
- Written agreement
- Other reasons justified by law.
Simple Patent
What is a Simple Patent
Simple patent is also known as a utility model and is usually suitable for an invention that is not technically complex or has a short commercial cycle.
Unlike regular patents that must possess novelty, inventive steps and industrial applicability in order to obtain protection, a simple patent only needs to possess novelty and industrial applicability and may be an improvement of an existing product and/or has a practical use. While a regular patent has a 20-year period of protection, a simple patent is only protected for 10 years from the filing date.
What is not an Invention?
According to Article 4 of Law 13/2016 on Patents, the following categories are not considered inventions, namely:
a) Aesthetics creation
Aesthetic creation does not fall under the category of the invention as it does not bring about problem-solving activities. Instead, it merely serves a visually pleasing function. As an alternative, the protection for aesthetic creation may usually be obtained under other intellectual property options namely industrial design
b) Schemes
Fundamentally, a scheme is a form of outline design or framework which illustrates a process to obtain a certain objective. A scheme in itself is not sufficient to be considered an invention as it does not explain in complete detail the process itself.
c) Rules and method for conducting:
1. mental activities, such as instruction/method of learning a language;
2. games, including but not limited to traditional games (ie. monopoly, cards) and contemporary games (ie. video games);
3. business activities, including but not limited to financial activities (i.e banking and accounting), administrative activities (marketing, advertising legal consideration, licensing), and other business activities (ie. operational research, planning, mapping, use of statistics in facilitating managerial decision, etc).
d) Computer program
In the previous law, a computer program was completely excluded from being regarded as an invention. However, under the most recent law and regulations, a computer program which possesses characters, and technical effects and provide technical solution could be regarded as an invention.
e) Presentation of information
Presentation is a form of communication with visual aid. Presentation is not considered as an invention as it does not provide any technical solution.
f) Discovery
Discovery is defined as any matter that is found in nature. Unlike invention, no human intervention is involved in creating a discovery. The patent law categorizes the following form as discovery:
1. new use of existing products; and/or
2. new form of an existing compound which does not produce any significant improvement of efficacy and difference in the chemical structure
Which inventions cannot be patented?
Inventions must fulfil patentability requirements, namely:
a. Novelty
Possession of novelty is established if, by the Filing Date or Priority Date in the case of Priority Application, the invention is not the same as any prior disclosure in the world in the form of writing, oral, demonstration, use or other means of publication.
b. Inventive steps
Based on available technological disclosure, the problem-solving in the invention is not obvious or predictable through the eyes of a person skilled in the art. A person skilled in the art refers to a practitioner or expert in the field who possesses general technical knowledge in the field, access to the prior art and a capacity to understand the disclosures of the invention based on their expertise.
c. Industrial applicability
An invention can be implemented repeatedly with the same quality in the industry by following the description of the invention.
What are the reasons for the transfer of the Patent?
- Inheritance
- Grants
- Testamentary
- Written agreement
- Other reasons justified by law.
Industrial Designs
What is Industrial Design?
An industrial design is a shape, configuration, or composition that is three-dimensional or two-dimensional and that is composed of lines or colours, or combinations of lines and colours, or combinations thereof, to create a visual impression. It can also be realized in three-dimensional or two-dimensional patterns and can be used in manufacturing products, items, industrial commodities, or handicrafts.
What are the subjects of industrial design rights?
Designers or those who receive the Industrial Design Right from the Designer are entitled to obtain the Industrial Design Right. When the Designator consists of several persons together, the Industrial Design Rights are granted jointly, unless otherwise agreed. Unless there is another agreement between the two parties without prejudice to the right of the Design if the use of the Design goes beyond the official relationship such that an Industrial Design is made in the official relationship with another party or that is made by another person by order, the holder of the Industrial Design Right is the party to which and/or in whose service the Industrial Design will be made.
What is the basis for the Protection of Industrial Design in Indonesia?
Industrial Design Law Number 31 of 2000 of the Republic of Indonesia concerning Industrial Design came into force on December 20, 2000. The Government Regulation No. 1 of 2005 relating to the Implementation of Law No. No. 31 of 2000 concerning the Industrial Design of the Republic of Indonesia.
What is a License Agreement for?
A License agreement allows the Industrial Design Rights Holder to grant a License to another party to carry out all the actions described in Article 9 unless otherwise agreed.
- Under this Law, the License Agreement must be recorded in the General Register of Industrial Design at the Directorate General.
- Third parties are not governed by license agreements that are not listed in the General Register of Industrial Design.
- Under paragraph (1), the License Agreement is published in the Official Gazette of Industrial Design.
Recordal of IP License
What is intellectual property license?
IP License is permission given by the holder or the owner of a registered intellectual property to another party by means of an agreement that allows the latter to use the holder or the owner’s exclusive rights upon a valid intellectual property registration in Indonesia for a certain period of time and under certain terms and conditions.
Is it necessary to record a License Agreement?
Yes, in light of Article 42 of Law No. 20/2016 on Trademarks & Geographical Indications, the License Agreement shall be requested its recording to the Minister by bearing a cost; the License Agreement that is not recorded will not have any legal consequences to the third party.
What are the requirements for recording a trademark license agreement?
- Power of Attorney (simply signed, notarization/legalization is not required)
- Copy of License Agreement Document (simple confirmatory agreement without disclosing confidential terms is possible). The license agreement must be legalized by a public notary.
- Copy of Registration Certificate or Certified True Copy or Official Extract
- Signed Statement Form confirming that the intellectual property is to be licensed:
- is within the protection period;
- does not harm the national economy;
- does not impede the development of technology; and
- does not contradict laws and regulations, decency and public order.
What would happen if we do not record the IP License agreement to the Trademark Office?
If you do not record the IP License agreement to the Trademark Office while you are granting another party to use your IP, such use by the third party will not be considered as the proper use of the IP by its owner which may result in the invalidation of such intellectual property.
IP Protection in Timor Leste
Is there a trademark law in Timor Leste?
TIMOR LESTE has currently neither applicable IP Laws nor authority which governs and administrates IP Protection Matters including filing a new trademark application for registration in that country.
How to conduct a trademark or other IP search in Timor Leste?
Conducting a trademark or other IP Search in Timor Leste is not possible at the moment since there is no authority nor government body that maintains the IP Database in the country.
How to apply for a trademark or other IP registrations in Timor Leste?
Since no foreseeable developments regarding the enactment of IP Laws in East Timor in the near future, it is strongly advisable that, for the moment, IP Owners secure the earliest possible publication of their IPs by means of Cautionary Notice Advertisement through TIMOR LESTE national daily newspapers.
How to record IP assignments or changes in Timor Leste?
It is not yet possible to file a recordal of assignment, change of name, change of address, change of name & address or merger in Timor Leste. You may consider advertising the Assignment through the publication of a Cautionary Notice.
Is it possible to advertise more trademark goods/services than those of the trademark registration in the home country?
Yes. It is possible to advertise in Cautionary Notice more goods/services than those of the trademark registration in the home country.
Can we use the advertised Cautionary Notices as proof when we file a lawsuit against an infringer of our trademarks in Timor Leste?
Yes. As the owner of the trademark who has properly announced your ownership of the trademark through a Cautionary Notice, you can use it as proof to file a lawsuit against an infringer of your trademarks in Timor Leste.
What are the legal consequences if we fail to re-publish the Cautionary Notice every two years?
There are no legal consequences if you fail to re-publish the Cautionary Notice every two years.
Is re-publication of the Cautionary Notice every two years in Timor Leste mandatory?
No. Re-publication of the Cautionary Notice once every two years is not mandatory. However, it is strongly advisable that the Cautionary Notice be re-published regularly to keep reminding the general public of Timor Leste regarding the origin of your intellectual property assets.