The Role of Local Intellectual Property Consultants in Indonesian Trademark Applications for Foreign Entities

Author: Fitri Astari Asril

In recent years, the investment environment in Indonesia has shown consistent improvement, creating a chance for international companies to broaden their business activities in the country. Expanding a business involves more than just considering market trends and expected profits; it also involves building a strong reputation within the specific nation, in this instance, Indonesia. This reputation is established by having a distinctive brand that reflects the uniqueness of a product or service, demonstrating the inherent quality of that product.

Technological advancements have indirectly shaped brand reputation, reaching the Indonesian public through social media even before official market launches. A brand’s international recognition, especially if endorsed by foreign celebrities or influencers, attracts Indonesians solely through social media. Hence, companies may not need to prioritize direct marketing and sales in the country. Familiarity with a brand, particularly through associations with foreign celebrities, establishes a connection with its esteemed reputation and uniqueness. This emphasizes the current importance of a robust brand strategy in both goods and services businesses.

Indonesia follows the “first to file” system, meaning protection commences when a trademark application is filed first. The entity submitting the application first is granted trademark protection from the application date, not the registration date. To register a trademark, applications can be directly submitted to the Directorate General of Intellectual Property (DGIP), with an online submission option available. Indonesian citizens have the option to independently file trademark applications or appoint a representative. While appointing a representative is not mandatory and does not have to be an intellectual property consultant, seeking advice and assistance from one is advisable. Intellectual property consultants possess comprehensive knowledge, aiding in examining potential registrability and challenges in the application process, including issues from the Trademark Office or disputes with prior trademark proprietors.

However, the scenario varies for foreigners aiming to register a trademark in Indonesia. As outlined in Article 5, paragraph (3) of Law Number 20 of 2016 on Trademarks and Geographical Indications in Indonesia, it mandates that trademark registration applications from which one or more applicant is resident of another nationality and legal entity having its domicile overseas is filed through a Proxy. Proxy means, according to this law¹, must be an intellectual property consultant residing or having a permanent address within the Republic of Indonesia. Consequently, this signifies that intellectual property consultants from overseas are not permitted to act on behalf of their clients in submitting trademark registration applications in Indonesia.

A query emerges: Must a foreign company, which has its domicile in Indonesia, designate a proxy (re: a local intellectual property consultant)? According to the interpretation delineated in the regulations (with no additional clarification provided), the company is not compelled to appoint a proxy as long as it maintains a registered domicile in Indonesia. However, again, opting for guidance from an intellectual property consultant proves a significantly safer approach to evaluate potential registrability and address challenges that may surface throughout both the registration and post-registration phases.

Furthermore, a registered trademark in Indonesia is entitled to a 10-year period of protection from the date of application. This protection grants exclusive rights, ensuring that no other party can exploit the mark without permission or intention. Following the initial 10-year term, this protection can be extended for successive 10-year intervals, with no set limit on the number of renewals. Consistently, maintaining the protection of the trademark by renewing it at each 10-year anniversary ensures perpetual protection. The renewal process should commence no later than 6 months before the expiration date, and there is a grace period of 6 months allowed after the conclusion of the protection period (with the expiration date calculated from the initial application date).

However, revisiting the issue, one may wonder whether the renewal process for foreign nationals must also engage a proxy (i.e., a local IP consultant), particularly given that the initial registration was overseen by a local proxy. Essentially, there are no specific regulations mandating this, as the Trademark Law predominantly addresses aspects related to trademark registration applications. However, in practice, and as confirmed by the Directorate General of Intellectual Property (DGIP), for foreign trademark proprietors, the renewal process does, indeed, need to be conducted through a local proxy.

Conclusion

The process of registering a trademark in Indonesia is not inherently more complicated for foreign individuals or companies; rather, it involves distinct procedures. Indonesian citizens have the option to independently pursue trademark registration without appointing a proxy. In contrast, foreign nationals who domiciled abroad are obligated to enlist the services of a local proxy for trademark registration in Indonesia, in accordance with existing legal regulations. This obligation applies not only to the initial application but also includes the renewal of trademarks.

Reference

  1. See Article 1 point 13 of Law Number 20 of 2016 on Trademarks and Geographical Indications in Indonesia

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Fitri Astari Asril
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