The new Trade Mark and Geographical Indication Law was passed by Parliament on 27 October 2016 and is expected to come into effect by 27 November 2016 or sooner depending on when the President ratifies the Law. Applications filed before the new Law comes into effect, will be processed under the old Law no. 15 of 2001.
On the prosecution front, it is now possible to file non-traditional marks and in the future, Madrid Protocol applications will also be accepted once Implementing Regulations are passed within two years. As publication will occur shortly after filing and before substantive examination, brand owners need to be vigilant in watching potential third party conflicting marks especially since the opposition period has been reduced to two months.
On the enforcement front, the ability for owners of well-known marks (as declared by a previous Court decision) to take infringement action against third parties even without a registered trademark, is a welcome change to combat trademark piracy. The requirement to prove that the infringer acted “deliberately” has also been removed in the criminal provisions for trademark infringement.
Prosecution - what’s new substantively?
Non-traditional Marks– 3 dimensional, sound and hologram marks can now be filed.
Madrid Protocol applications – accepted once Implementing Regulations are passed within two years.
Additional absolute and relative grounds for rejection -
- If the mark contains an element that can mislead the public about the origin, quality, type, size, kind, intended use of the goods and/or services applied for registration or is a protected plant variety names for similar goods and/or services; or
- If the mark contains a description that is not in accordance with the quality, benefit or efficacy of the produced goods and/or services; or
- If the mark is similar to a registered Geographical Indication
Generic marks – If a mark has become generic, this shall not stop anyone in filing the said generic term with an additional term, provided it is distinctive.
Geographical Indications – can include foreign Geographical Indication registrations, if such Geographical Indication has been approved or registered in the country of origin or in accordance with international agreements.
Prosecution - key procedural changes
Filing Date – now possible to have a filing date once application is filed (Power of Attorney and Declaration of Ownership can be filed later). The Law also provides for electronic filing of applications.
Publication – applications will now be published before they are substantively examined. In theory, the Trademarks Office has to publish new applications within 15 days from the filing date.
Opposition – opposition period is shortened from three months to two months. Rebuttals are to be filed within two months from the delivery date (previously receipt date) of the opposition.
Office action and substantive examination – responses to office actions should be filed within 30 working days from delivery date (previously the receipt date) of office action, with the substantive examination period shortened to 150 working days (about six months) from previously nine months.
Registration Time Frame - in theory, the registration process under the new Law should take approximately nine months, compared to the previous 14 months.
Late Renewal – possible within six months of expiry date, subject to late fees. However, this does not apply to renewal application for a legal entity’s logo.
Recordal of Assignment/Changes of Name/Address – can now be filed against pending applications as well. Recordal of licenses remains only possible against registered marks.
Post registration amendments - now possible to amend the certificate, subject to further Implementing Regulations.
Revocation, infringement and enforcement
Deletion action – only on the ground of non-use for a period of three consecutive years from the date of registration or last use. The ground of non-use in accordance to registration, has been removed.
Cancellation action - bad faith is clearly specified as the ground of filing a cancellation action after five years.
Infringement Action – an infringement action can be filed by the owner of a well-known mark based on a court decision.
Preliminary Injunction – in addition to stopping entry of suspected goods and securing evidence, a preliminary injunction may now be requested to secure and prevent the removal of said evidence. The collateral shall be in proportion to the value of goods. In theory, the Court shall summon the subject of the preliminary injunction within seven working days, and decide within 30 working days.
In the case where the preliminary injunction is granted, the brand owner can file a complaint to the Police or PPNS (civil servant investigators). PPNS’s authority has been expanded to include raid and confiscation of infringing materials and goods.
Criminal Sanctions – There is no longer a requirement that the infringer uses the mark “deliberately”. All that is required is that the use is unauthorised. Criminal sanctions for trade mark infringement have doubled to IDR 2 billion (identical mark) and IDR 1 billion (similar mark) respectively.
The new law also introduces enhanced punishment in cases where the infringement results in damage to health and/or environment and/or human death, to up to 10 years’ imprisonment and/or a maximum fine of IDR 5 billion.