PROTECTION FOR TRADEMARK RIGHTS IN INDONESIA, THESE ARE THE REQUIREMENTS FOR OBTAINING ONE

By Ardhiyasa Suratman, S.H.

Question

How to protect trademark rights in Indonesia? If someone uses my trademark without permission, what legal remedies can I take?

Brief Answer 

Essentially, a trademark is an identifying mark for a product which can be used to differentiate between one good or service and another. Then, because of the important function of a trademark for a trademark owner, it is necessary to make efforts to provide protection for trademark rights. Trademark protection is provided when there is a trademark infringement committed by a party who does not have the rights to a trademark.

Then, how do you get protection for trademark rights? What legal remedies can be taken if there is an infringement of trademark rights?

What is a Trademark?

Before answering your question, we should first understand what a trademark (merek) means. According to Harsono Adisumarto in his book ‘Hak Milik Intelektual Khususnya Hukum Paten dan Merek’ (Intellectual Property Rights, Particularly Patent and Trademark Law), a trademark is an identifying mark for a product which can be used to differentiate between one good or service and another. Furthermore, a trademark is an intellectual property right that needs to be protected, and a trademark can be interpreted as an identifying mark that differentiates someone’s property from someone else’s (p. 19).

This definition is in line with Article 1 item 1 of Law Number 20 of 2016 on Trademarks and Geographical Indications [UU MIG], namely:

A trademark is a sign that can be displayed graphically in the form of an image, logo, name, word, letter, number, colour arrangement, in a two-dimensional and/or three-dimensional form, sound, hologram, or a combination of two or more of these elements to differentiate goods and/or services produced by individuals or legal entities in the course of trading goods and/or services.

Learning from the provisions of the article, the function of a trademark is very important for a trademark owner, and for consumers who use certain branded goods or services. Therefore, efforts need to be made to provide protection for trademark rights. With this protection, the trademark owner’s brand is protected, and consumers are not harmed because there are parties who are not entitled to use it. [1]

Trademark Application Procedures

As we have explained above, the existence of a trademark is an identifying mark or distinction or characteristic of a product (whether in the form of goods or services) which must be legally protected by the business owner. [2] Regarding the protection efforts that can be taken by a trademark owner, it is important to know that under Article 3 of UU MIG, rights to a trademark are only obtained after the trademark is registered.

Therefore, in order to obtain rights and receive protection for a trademark, a trademark owner must first register their trademark with the Directorate General of Intellectual Property (“DGIP”) of the Ministry of Law and Human Rights.

Basically, applications for trademark registrations are regulated in Ministry of Law and Human rights Regulation (MoLHR Reg 67/2016) [Permenkumham 67/2016] and the amendments thereto. The application is submitted by filling out a duplicate form in Indonesian by the applicant or their proxy to the Minister of Law and Human Rights (“MoLHR”).[3]

The application for trademark registration contains at least:[4]

  1. date, month and year of application;
  2. applicant’s full name, nationality and address;
  3. full name and address of the proxy if the application is submitted by a proxy;
  4. name of the country and date of the first trademark application in the case of an application submitted with Priority Rights;
  5. trademark label;
  6. colour if the trademark for which registration is applied uses colour elements; and
  7. class of goods and/or class of services as well as description of types of goods and/or types of services.

Subsequently, when submitting an application, the applicant or their proxy must also attach the following documents:[5]

  1. proof of payment of application fee;
  2. three trademark labels, with the smallest size 2 x 2 cm and the largest 9 x 9 cm;
  3. statement letter of trademark ownership;
  4. power of attorney, if the application is submitted by a proxy;
  5. proof of priority, if using Priority Rights and its translation in Indonesian.

For information, applications can be submitted electronically or non-electronically.[6] In the event that the application is submitted electronically, the applicant/proxy must fill out the form electronically and upload the documents above via the official website of the Directorate General of Intellectual Property [Direktorat Jenderal Kekayaan Intelektual]. [7] Meanwhile, if an application is submitted non-electronically, the applicant/proxy submits the application in writing and encloses the above documents to the Minister of Law and Human Rights.[8]

Furthermore, excerpted from the article [Mau Daftar Merek? Ikuti Panduan Ini!] (Do you wish to Register a Trademark? Follow this Guide!), an application for trademark registration which has been received by the Minister of Law and Human Rights is further checked for complete formalities, as regulated in Article 9 of MoLHR Reg 67/2016. Then, if there are insufficient documents for the requirements, within 30 working days from the date of receipt of the application, the applicant/proxy is given time to complete it within a period of 2 months since the notification letter to complete the requirements is sent.[9]

Further, if it is not completed until the deadline expires, the application is considered withdrawn.[10] Meanwhile, an application that meets the document requirements is given an acceptance date announced by the Minister of Law and Human Rights in the Official Trademark Gazette.[11]

Protection for Trademark Rights 

After a trademark is declared to be accepted as a registered trademark, Hak atas Merek [Right to the Trademark] appears, namely an exclusive right granted by the state to the owner of the registered Trademark for a certain period by using the trademark itself or by granting a consent to other parties to use it.[12] 

For your further information, quoted from the article First to File atau First to Use, Indonesia Anut yang Mana? [First to File or First to Use, which one is adopted by Indonesia?] basically, in intellectual property law, Indonesia adopts the “First to file” principle, which means that registration of a trademark will only be granted to the party who first submits an application for a trademark registration. Hence, to respond to your question, we can conclude that a trademark will only receive legal protection if the trademark has been registered with DGIP.

Legal Remedies

In relation to your question regarding legal remedies that can be taken if someone else uses your trademark without permission, basically protection for a trademark is provided when there is a trademark infringement committed by a party who is not entitled to a trademark.[13] In the event that there is an infringement of a registered trademark, you can take the following steps:

  1. Civil Dispute Resolution

If there is another party unlawfully uses a trademark that is substantially or completely similar for the goods and/or services that are similar to those of the registered trademark owner, then the trademark owner can file a civil suit with the Commercial Court [14] in accordance with its jurisdiction as regulated in Presidential Regulation 97/1999 [Keppres 97/1999].

Under Article 83 paragraph (1) of UU MIG, the owner of a registered trademark can file a lawsuit for compensation and/or termination of all actions related to the use of the trademark against a party who is not entitled to use the trademark.

  1. Criminal Dispute Resolution

Other parties who unlawfully use a trademark that is substantially or completely similar for the goods and/or services of the same type may also be held criminally liable.

If a person unlawfully uses the same trademark in its entirety for the goods and/or services of the same type produced and/or traded, he or she has the potential to be punished with imprisonment for a maximum of five years and/or a maximum penalty of IDR two billion.[15]

Then, if a person unlawfully uses a trademark that is substantially similar for the goods and/or services of the same type which are produced and/or traded, he or she can be punished with imprisonment for a maximum of 4 years and/or a maximum penalty of IDR two billion.[16]

  1. Arbitration or Alternative Dispute Resolution

In addition to civil and criminal dispute resolutions, under Article 93 of the UU MIG, parties can also resolve disputes through arbitration or alternative dispute resolution, which in this case, Law 30/1999 [UU 30/1999] applies.

We hope the above answer is useful.  

Legal Basis:

  1. Law Number 30 of 1999 on Arbitration and Alternative Dispute Resolution;
  2. Law Number 20 of 2016 on Trademarks and Geographical Indications;
  3. Government Regulation in Lieu of Law Number 2 of 2022 on Job Creation that has been established as law through Law Number 6 of 2023;
  4. Minister of Law and Human Rights Regulation Number 67 of 2016 on Trademark Registration as amended to  Minister of Law and Human Rights Regulation Number 12 of 2021 on Amendments to Minister of Law and Human Rights Regulation Number 67 of 2016 on Trademark Registration;
  5. Presidential Decree Number 97 of 1999 on Establishment of Commercial Courts at Ujung Pandang District Court, Medan District Court, Surabaya District Court, and Semarang District Court. 

References:

  1. Enny Mirfa. Perlindungan Hukum Terhadap Merek Terdaftar [Legal Protection for Registered Trademarks]. Jurnal Hukum Samudra Keadilan, Vol. 11, No. 1, 2016;
  2. Harsono Adisumarto. Hak Milik Intelektual Khususnya Hukum Paten dan Merek [Intellectual Property Rights, Particularly Patent and Trademark Law]. Jakarta: Akademika Pressindo, 1990;
  3. Insan Budi Maulana (et.al)Kapita Selekta Hak Kekayaan Intelektual. Yogyakarta: Pusat Studi Hukum UII, 2000;
  4. Yuliana Utama (et. al)Perlindungan Merek Berbasis Tingkat Daya Pembeda Ditinjau dari Doktrin Dilusi Merek di Indonesia. ACTA DIURNAL Jurnal Ilmu Hukum Kenotariatan Fakultas Hukum Universitas Indonesia, Vol. 5, No. 1, 2021;
  5. Pendaftaran Merek, Direktorat Jenderal Kekayaan Intelektual, diakses pada Senin 11 September 2023, pukul 11.21 WIB.

[1] Insan Budi Maulana (et.al)Kapita Selekta Hak Kekayaan Intelektual [Capita Selecta Intellectual Property Rights]. Yogyakarta: Pusat Studi Hukum UII, 2000, hal. 89.

[2] Yuliana Utama (et. al)Perlindungan Merek Berbasis Tingkat Daya Pembeda Ditinjau dari Doktrin Dilusi Merek di Indonesia [Protection for Trademark Based on the Level of Differentiating Power Viewed from the Trademark Dilution Doctrine in Indonesia]. ACTA DIURNAL Jurnal Ilmu Hukum Kenotariatan Fakultas Hukum Universitas Indonesia, Vol. 5, No. 1, 2021, hal. 140.

[3] Article 3 paragaph (1) of Peraturan Menteri Hukum dan Hak Asasi Manusia Nomor 67 Tahun 2016 tentang Pendaftaran Merek (“MoLHR Reg 67/2016”).

[4] Article 3 paragaph (2) of MoLHR Reg 67/2016.

[5] Article 3 paragaph (3) of MoLHR Reg 67/2016.

[6] Article 6 of MoLHR Reg 67/2016.

[7] Article 7 of MoLHR Reg 67/2016.

[8] Article 8 of MoLHR Reg 67/2016.

[9] Article 10 paragaphs (2) and (3) of MoLHR Reg 67/2016.

[10] Article 10 paragaph (4) of MoLHR Reg 67/2016.

[11] Article 4 paragaphs (1) and (2) of MoLHR Reg 67/2016.

[12] Article 1 item 5 of Law Number 20 of 2016 on Trademarks and Geographical Indications Undang-Undang Nomor 20 Tahun 2016 tentang Merek dan Indikasi Geografis (“UU MIG”).

[13] Enny Mirfa. Perlindungan Hukum Terhadap Merek Terdaftar [Legal Protection for Registered Trademarks]. Jurnal Hukum Samudra Keadilan, Vol. 11, No. 1, 2016, hal. 66.

[14] Article 83 paragaph of (3) UU MIG.

[15] Article 100 paragaph (1) of UU MIG.[16] Article 100 paragaph (2) of UU MIG.

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Ardhiyasa Suratman
Managing Partner

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