CHAPTER IV: REGISTRATION OF TRADE MARKS

Part One: Announcement

 

Article 19

Within a period of at the latest 14 (fourteen) days after the filing date of an application for registration of a trade mark, the Trade Mark Office shall announce the application for registration of a trade mark that has fulfilled the requirements as referred to in Article 9 and Article 10, and in case of filing by using a priority right, the provisions in Article 12 and Article 13 must also be fulfilled.

 

Article 20

  1. Announcement shall last for 6 (six) months and shall be made by
  1. placement on the announcement board, which is specially provided for this purpose and which can be easily and clearly seen by the public; and
  2. placement in the Official Gazette of Trade Marks, which is published periodically by the Trade Mark Office.

(2) The date of commencement of announcement of an application for registration of a trade mark shall be recorded by the Trade Mark Office.

 

Article 21

Announcement shall be made by mentioning:
  1. the full name and address of the owner of the trade mark, as well as the full name and address of the proxy, if the application for trade mark registration is filed through a proxy;
  2. the class and kind of goods and or services for which registration of the trade mark has been requested;
  3. the filing date of the application for registration of the trade mark;
  4. the name of the country and the filing date of the first application for the registration of the trade mark, if the application for registration is filed with a priority right.
  5. a sample of the trade mark labels, including information concerning its colors, if the trade mark contains color elements, and the trade mark label uses foreign language and or letters other than the Latin alphabet and or numerals which are not commonly used in Indonesian language, it must be furnished with its Indonesian translation, using the Latin alphabet or numerals which are commonly used in Indonesian language, as well as its pronunciation in the Latin spellings.

 

Part Two : Objection and Rebuttal

 

Article 22

(1) During the period of announcement, any person or legal entity may file objections to an application for registration of the trade mark concerned, in writing to the Trade Mark Office.

(2) Objections as referred to in paragraph (1) may be filed where there is sufficient reason accompanied by evidence that the trade mark for which registration is requested is a trade mark which on the basis of this Act is unregistrable or must be rejected.

(3) Where there are objections as referred to in paragraph (1), the Trade Mark Office shall within a period of at the latest 14 (fourteen) days from the date of receipt of the objections send a copy of the letter containing said objections to the person or legal entity or the proxy who filed the application for registration of the trade mark.

 

Article 23

(1) A person or legal entity or proxy who has filed an application for registration of a trade mark shall be entitled to file rebuttals to the objections as referred to in Article 22 to the Trade Mark Office.

(2) Rebuttals as referred to in paragraph (1) shall be filed in writing within a period of at the latest 2 (two) months from the date of receipt of the copy of the objections delivered by the Trade Mark Office.

 

Article 24

The Trade Mark Office shall use the objections and rebuttals as additional material in the examination of the application for registration of the trade mark concerned.

 

Part Three : Substantive Examination

 

Article 25

(1) The Trade Mark Office shall conduct a substantive examination of the application for registration of a trade mark after the expiry of the announcement period as referred to in Article 20 or where there are objections during the period of announcement, after receipt of the rebuttals.

(2) The examination shall be conducted with due regard to the provisions of Article 5 and Article 6 and whether there are objections or rebuttals.

 

Article 26

The examination shall be completed within a period of at the latest 9 (nine) months from:

  1. the expiry date of the announcement; or
  2. the expiry date of the period for filing of rebuttals.

 

Article 27

(1) The examination shall be conducted by a Trade Mark Examiner who possesses the skills and qualifications as a Trade Mark Examiner of the Trade Mark Office.

(2) A Trade Mark Examiner shall have the status of a functional official appointed and dismissed by the Minister on the basis of certain requirements.

(3) A Trade Mark Examiner shall be given a functional rank and allowances in addition to other rights in accordance with prevailing laws and regulations.

 

Article 28

  1. Where a Trade Mark Examiner as referred to in Article 27 paragraph (1) concludes that an application for registration of a trade mark can be approved, the Trade Mark Office shall:
  1. register the trade mark in the General Register of Trade Marks;
  2. notify the person or legal entity or proxy who filed the application for registration of the trade mark;
  3. issue a Trade Mark Certificate; and
  4. announce said registration in the Official Gazette of Trade Marks.

(2) Where a Trade mark Examiner as referred to in Article 17 paragraph (1) concludes that an application for registration of a trade mark is unregistrable or must be rejected, the Trade Mark Office shall issue a decision on the rejection of said application for registration of a trade mark.

(3) A decision on rejection as referred to in paragraph (2) shall be made known in writing to the person or legal entity or proxy who filed the application for registration of the trade mark, stating the reasons therefor.

 

Article 29

(1) The Trade Mark Certificate shall be issued to the applicant for registration of the trade mark within a period of 30 (thirty) days at the latest commencing from the date of such trade mark is registered in the General Register of Trade Marks.

(2) Where an application for registration of the trade mark was filed through a proxy, the Trade Mark Certificate as referred to in paragraph (1) shall be conveyed to the proxy, with a copy to the owner of the trade mark.
  1. The Trade Mark Certificate as referred to in paragraph (1) shall contain:
  1. the full name and address of the owner of the registered trade mark;
  2. the full name and address of the proxy, if the application for registration of the trade mark was filed on the basis of Article 11;
  3. the date of submission and the filing date of application for registration of a trade mark;
  4. the name of the country and the filing date of the first application for registration of a trade mark, where the application for registration was filed with a priority right;
  5. label of the registered trade mark, including information concerning its colors, if the trade mark contains color elements, and the trade mark label uses foreign language and or letters other than the Latin alphabet and or numerals which are not commonly used in Indonesian language, it must be furnished with its Indonesian translation, using the Latin alphabet or numerals which are commonly used in Indonesian language, as well as its pronunciation in the Latin spellings.
  6. number and date of registration;
  7. the class and kind of goods and or services for which the trade mark has been registered;
  8. the validity period of the trade mark registration.

(4) Any person may submit a request for a certified copy of the trade mark registration as registered in the General Register of Trade Marks.

(5) The request as referred to in paragraph (4) is subject to a fee, the amount of which shall be stipulated in a Ministerial Decree.

 

Article 30

The trade mark registration number must be set forth on any use of a registered trade mark, the implementation of which shall be regulated further in a Government Regulation.

 

Part Four : Appeal Petitions

 

Article 31

(1) A petition for appeal may be submitted against the refusal of an application for registration of a trade mark, for reasons and consideration pertaining to substantive matters, as referred to in Article 5 or Article 6.

(2) A petition for appeal shall be submitted in writing to the Trade Mark Appeal Commission by the applicant, or a legal entity or its proxy for registration of a trade mark, and a copy thereof shall be sent to the Trade Mark Office.

(3) The Trade Mark Appeal Commission is a special body, permanently presided by a chairman, who also serves as a member of the Commission, and shall be within the Department headed by the Minister.

(4) The members of the Trade Mark Appeal Commission shall be in an odd number, comprising at least 3 (three) persons, consisting of the required experts and or senior Trade Mark Examiners, who did not carry out the substantive examination on the application for trade mark registration concerned.

(5) The chairman and members of the Trade Mark Appeal Commission shall be appointed and dismissed by the Minister.

 

Article 32

(1) An appeal petition shall be filed describing in detail the objection to the rejection of the application for registration of a trade mark, stating the reasons therefor.

(2) The reasons as referred to in paragraph (1) must not constitute corrections or improvements of the rejected application for registration of a trade mark.

 

Article 33

(1) An appeal petition shall be filed within a period of at the latest 3 (three) months from the date of receipt of the notification of rejection of the application for registration of a trade mark.

(2) Where said period for an appeal has lapsed without an appeal petition, the rejection of the application for registration of the trade mark shall be deemed to have been accepted by the person or legal entity or proxy who filed the application for registration of the trade mark.

(3) Where the rejection of the application for registration of the trade mark has been deemed to have been accepted by the person or legal entity or proxy as referred to in paragraph (2), the Trade Mark Office shall record this fact in the General Register of Trade Marks.

 

Article 34

  1. The decision of the Trade Mark Appeal Commission shall be made within a period of 6 (six) months at the latest commencing from the date of receipt of the appeal petition.
  2. The decision of the Trade Mark Appeal Commission is final, administratively as well as substantively.
  3. In the event the Trade Mark Appeal Commission approves the appeal petition, the Trade Mark Office shall execute the registration and issue a Trade Mark Certificate in manners as referred to in Article 28 and Article 29.
  4. In the event the Trade Mark Appeal Commission rejects the appeal petition, the Trade Mark Office shall within 30 (thirty) days at the latest as from the date of receipt of the decision of the Trade Mark Appeal Commission, notify said refusal to the person or legal entity or its proxy as referred to in Article 31 paragraph (2).

 

 

Article 35

The organizational structure and the work methods of the Trade Mark Appeal Commission and the procedure for appeal petitions and examinations as well as settlements shall be regulated further in a Government Regulation.

 

Part Five : Extension of Period of Protection of a Registered Trade Mark

 

Article 36

(1) Upon the request of a trade mark owner, the period of protection of a registered trade mark may be extended for additional periods of the same duration.

(2) An application for extension of the period of protection of a registered trade mark as referred to in paragraph (1) shall be filed in writing by the owner or his proxy within a period of not more than 12 (twelve) months and at least 6 (six) months prior to expiry of the period of protection of said registered trade mark.

(3) An application for extension of the period of protection of a registered trade mark as referred to in paragraph (2) shall be filed to the Trade Mark Office.

(4) An application for extension of the period of protection of a registered trade mark as referred to in paragraph (2) shall be subject to a fee, the amount of which shall be stipulated in a Ministerial Decree.

 

Article 37

An application for extension of the period of protection of a registered trade mark shall be approved if:

a. the trade mark concerned is still used on the goods or services stated in the Trade Mark Certificate.

b. the goods or services as referred to in letter a still produced and traded.

 

Article 38

(1) An application for extension of the period of protection of a registered trade mark shall be rejected by the Trade Mark Office if it does not fulfill the provisions as referred to in Article 36 and Article 37.

(2) The rejection of an application for extension of the period of protection of a registered trade mark shall be made known to the owner of the trade mark or his proxy, stating the reasons therefor.

 

Article 39

(1) An extension of the period of protection of a registered trade mark shall be recorded in the General Register of Trade Marks and shall be announced in the Official Gazette of Trade Marks.

(2) An extension of the period of protection of a registered trade mark shall be made known in writing to the owner of the trade mark or his proxy.

 

Part Six : Change of Name or Address of a Registered Trade Mark Owner

 

Article 40

(1) A change of name or address of a registered trade mark owner shall be made known to the Trade Mark Office accompanied by a valid copy of the evidence of said change.

(2) A change of name or address of a registered trade mark owner which has been recorded by the Trade Mark Office shall be announced in the Official Gazette of Trade Marks.

(3) The recording of a change of name or address as referred to in paragraph (1) shall be subject to a fee, the amount of which shall be stipulated in a Ministerial Decree.

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