Important Changes to Indonesian Trade Mark Law

The Indonesian Parliament recently approved important changes to the Indonesian Trade Mark Law and these amendments should take effect on 26 November 2016.

Key provisions include:

• The introduction of non-traditional trade marks including three-dimensional marks, sound marks and hologram marks.
• Protection for geographical indications.
• Providing for registration of international trade marks which will allow Indonesia to accede to the Madrid Protocol although implementing regulations will still need to be drafted.  This is expected to be within 2 years.
• Allowing the assignment of trade mark applications; previously only registrations could be assigned.
• Owners of marks that have been found to be well-known in previous court decisions may bring infringement actions, even if they do not have an Indonesian trade mark registration.  The law does not state that it must be an Indonesian court decision and, therefore, it is arguable that decisions of overseas courts may also be relied upon.  
• Criminal penalties for trade mark infringement have been substantially increased and specific enhanced penalties have been introduced where the infringement results in damage to health, or the environment, or causes death.
• There will be a 6 month grace period for renewal of trade marks after expiry of the renewal period. 

A significant procedural change will also be made to streamline and expedite the trade mark application process.  Under the new law, if a trade mark application passes the initial formality examination, it will proceed to publication within 2 weeks of the filing date of the application.  It is important to note that publication will now occur before the substantive examination stage.  Third parties will have 2 months to oppose an application instead of the 3 months under the old system.  It is hoped that this will speed up the registration process considerably.  However, trade mark owners will have to monitor publications very carefully and be prepared to take quick action.  A watch service is highly recommended.