A new trademark law has been enacted in Indonesia, and became effective on 25 November 2016. The new trademark law which was introduced as Law No. 20 of 2016 on Trademark and Geographical Indication (“New Trademark Law”) covers new provisions which allow the registration of non-traditional trademark and international trademark registration.
Traditional Trademark vs Non-Traditional Trademark
The old trademark law only allowed the registration of traditional trademarks that is limited to picture, name, word, letters, figures, composition of colors, or a combination thereof. Meanwhile, under the New Trademark Law the applicant may now register non-traditional trademarks in the form of 3D (three-dimensional), sound, hologram, or a combination thereof. The implementation of non-traditional trademarks between one country to another country is varied. Example, scents and tastes are acceptable to be registered as trademarks in United States, meanwhile motion and position can be registered in Japan. It means the non-traditional trademarks have many formats. The New Trademark Law does not clearly explain the meaning of 3D mark, sound mark, and hologram mark.
The New Trademark Law explains that for the registration of sound mark, the applicant must submit a notation and sound recording, and for registering 3D (three-dimensional) mark, the applicant must submit the trademark label in the form of 3D characteristic, that can be seen from the front, side, top, and bottom. The New Trademark Law however does not regulate the requirements for registering hologram mark. The New Trademark Law mentions that the conditions and procedures of trademarks registration will be regulated further under a ministerial regulation. To date, the ministerial regulation has not yet been issued.
Japan allowed the registration of non-traditional trademarks in May 2014, through the amendment of its trademark law. The amendment attracted many entrepreneurs in Japan to register their non-traditional trademarks, since the non-traditional trademarks add more variation for entrepreneurs’ branding strategies. In October 2015, the Japan Patent Office made a press release saying that as of 23 October 2015, the total applications of non-traditional trademarks are 1,039.
International Trademarks Registration
Another new provision in the New Trademark Law is the application of international trademarks registration from Indonesia to another country through International Bureau, by submitting the application to the Directorate General of Intellectual Property (“DGIP”). The international trademark registration is the implementation of Madrid Protocol. The objectives of international registration, among others are to simplify, reduce cost and energy to the applicant for registering its trademark abroad. By using international trademark registration, the applicant in Indonesia does not need to register its trademark directly to the trademark office in another contracting party of Madrid Protocol. Instead, the applicant just needs to submit the application to the DGIP, and the DGIP will deliver the application to WIPO. After receiving the application, the International Bureau will examine the formalities of application before publishing it in the WIPO Gazette of International Marks, and then after that notifying the designated contracting party. The decision whether to approve or not the application shall be the authority of the designated contracting party under its trademark law. Further provisions on international trademarks registration will be regulated further under government regulation.
Ivor Ignasio Pasaribu