THE AMENDMENT OF TRADEMARK LAW IN INDONESIA

2018/05/23

BACKGROUND
Having passed through a fairly tough formulation phase and accompanied by inputs from various parties ranging from academics, legal practitioners in the field of intellectual property and officials in the Directorate General of Intellectual Property of the Republic of Indonesia since several years ago, finally on November 25, 2016 the Law No. 20 Year 2016 on Trademark and Geographical Indication signed and promulgated by the President of the Republic of Indonesia, Joko Widodo. Law No. 20 Year 2016 is a substitute of Law No. 15 Year 2001.
The considerations of the amendment or revision of the Trademark Law No. 15 Year 2015 are as follows:
a. That the process and procedure of trademark registration as set forth in the previous Trademark Law is too complex and time consuming;
b. That there are still regulations that are not comply with international conventions that have been ratified;
c. The existence of Indonesia's plan to become a member of Madrid protocol.
 
THE AMENDED POINTS
Under the new Law on Trademark & Geographical Indication, several changes are made including:
SUBJECT OF AMENDMENT IN THE TRADEMARK LAW
NEW LAW
OLD LAW
1. THE AMENDMENT OF THE TITLE OF LAW
In Law No. 20 Year 2016, reaffirmed the existence of arrangements on Geographical Indications as listed on the front page of the Law
Law on Trademark and Geographical Indication
Law on Trademark
2. THE EXTENSION OF THE TYPE OF MARK
In Law No. 20 Year 2016 there is trademark extension other than a pre-existing conventional trademark so that the protected trademarks include:
Conventional Trademark
Non Traditional Trademark, consist of:
Three-Dimension Mark
Sound Mark
Hologram Mark
Only covers Conventional Trademark
3. THE AMENDMENT OF PROCESS FLOW OF TRADEMARK REGISTRATION
In this new Trademark Law, the mark for which the registration is applied, is published before entering the next stage i.e. substantive examination.
APPLICATION
FORMALITY
EXAMINATION
PUBLICATION
SUBSTANTIVE
EXAMINATION
CERTIFICATION
APPLICATION
FORMALITY
EXAMINATION
SUBSTANTIVE
EXAMINATION
PUBLICATION
CERTIFICATION
4. SIMPLIFYING THE REGISTRATION PROCEDURE
In the Law of Trademark & Geographical Indication No. 20 Year 2016 there are rules becoming trademark registration procedure easier and simpler.
Contain provisions on the minimum requirements for trademark application to obtain a filling date.
Contain provisions on correction if there is an error.
Does not regulate the minimum requirements of the trademark application.
Does not contain provisions if there is an error.
5. THE RENEWAL OF TRADEMARK REGISTRATION
Under the new Trademark Law, new renewal application can be filed for a maximum of 6 (six) months before the expiration. Trademark renewal is also allowed for trademarks that have expired for maximum of 6 (six) months with the payment of fines.
In 6 (six) months before; and 6 (six) months after the expiration of the trademark registration period.
In 12 (twelve) months before the expiration of the trademark registration period.
6. THE ASSIGNMENT OF RIGHTS / THE CHANGE OF NAME & / ADDRESS OF THE TRADMEARK OWNER
Under the new Trademark Law there is also an arrangement regarding the assignment of rights of a trademark, which in the old Trademark Law No. 15/2001 it may only be done on registered trademarks, but in Law No. 20/2016 assignment are not only applicable to registered trademarks, but also to pending trademarks.
Applicable to pending trademarks and registered trademarks.
Only applicable to registered trademarks.
7. THE REGISTRATION OF INTERNATIONAL TRADEMARK
In the new Trademark Law No. 20/2016 has contained rules on international trademark registration under the Madrid Protocol.
Contain Provisions on International Trademark Registration Under Madrid Protocol
There is no Provisions on International Trademark Registration
8. REGULATION ON GEOGRAPHICAL INDICATION
Provisions on geographical indication are set forth in more detail.
The provisions of geographical indication are only the main points, further provisions are regulated by government regulations.
9. PROVISIONS ON CRIMINAL
Contains provisions on the imposition with criminal sanction regarding trademarks which products may impair health and threaten the safety of human soul.
Does not contain provisions concerning the imposition with criminal sanction.
THE AMENDMENT PURPOSES
With the issuance of the new Law on Trademark and Geographical Indication, the purposes of the formulator are as follows:
1. Simplifying the trademark registration process;
2. Providing prompt and excellent services to the Applicants;
3. Providing internationally harmonious protection;
4. Complying the needs of international trade activities.
The Government of Indonesia, in particular the Directorate of Trademark & Geographical Indication represented by Mr. Fatlurachman as the Trademark Director in a brief interview with the author on an occasion accompanied by his staff, has demonstrated the seriousness for the continuous correction and improvement throughout the line including:
- Procurement of computer facilities and supporting equipment with the current specifications and sufficient quantities;
- Recruitment of staff outside the Directorate General of Intellectual Property to complete the existing number of human resources;
- Training to staff covering in-home-country training as well as comparative studies at the Trademark Office in countries such as Japan, Australia, the United States and New Zealand;
- Started an automation program allowing online trademark registration and renewal since December 2016;
- Providing technical guidance about online trademark registration to Intellectual property practitioners.
- Completion of work including trademark registration, renewal and mutations that have been pending in previous eras.
Based on the above matters, the expectation as stated in the purposes of the amendment of the Law No. 15/2001 can be realized, wherein with the enactment of Law on Trademark & Geographical Indication No. 20 Year 2016, the process of trademark registration can be easier, faster, to comply with international harmonious protection that will eventually comply with the necessary needs in international trade activities that currently require convenience, transparency and time efficiency.
 
BIBLIOGRAPHY:
 
- Trademark Law No. 15 Year 2001
- Law on Trademark & Geographical Indication No. 20 Year 2016
- Socialization Paper of the New Trademark Law by Fatlurachman, SH., MM as a Director of Trademark from Directorate of Trademark and Geographical Indication, Directorate General of Intellectual Property, Ministry of Law& Human Rights of the Republic of Indonesia Year 2017.