1. Q:

 

A:

What acts are deemed infringement upon the exclusive right to use a registered trademark?

One of the following acts is deemed infringement upon the exclusive right to use a registered trademark:

  1. Using a trademark identical with or similar to the registered trademark without the authorization of the trademark registrant for identical or similar goods;
  2. Selling goods which infringes other's exclusive right to use a registered trademark;
  3. Counterfeiting, making without authorization, symbols of other's registered trademark, or selling the symbols of registered trademark counterfeited or made without authorization;
  4. Replacing, without the consent of the trademark registrant, its or his registered trademark and market again the goods bearing the replaced trademark; or
  5. Causing other damages to other's exclusive right to use a registered trademark, including:
    (1) Prominently using lexical items identical with or similar to another person's registered trademark as one's own enterprise name on identical or similar goods, which is most likely to cause confusion on the part of the relevant public;
    (2) Reproducing, imitating or translating another person's registered well-known trademark or the main part thereof to be used on unidentical or dissimilar goods as a trademark and to mislead the public, which is likely to result in prejudice to the interests of the well-known mark registrant;
    (3) Registering lexical items identical with or similar to another person's registered trademark as a domain name, and conduct, via the domain name, e-commerce in the confusion on the part of the relevant public.

 

2. Q:

A:

How is an act of trademark infringement handled?

In the case of an act infringing the exclusive right to use a registered trademark, anyone can complain or report to the Police Investigator or IPO Official Investigator, of the location where the infringer has its domicile or where the infringing act is committed. The infringee may alternatively institute civil suit in the people's court directly.

 

3. Q:

 

A:

What documents and materials are required when requesting the IPO Official Investigator to investigate and handle a case of trademark infringement?

An infringee is required to make available the following documents and evidence with the assistance of an IP Consultant:

  1. Valid trademark certificate to prove the lawful rights and interest of the registrant;
  2. Correct name, address of the infringer or the location of the infringing act;
  3. Evidence of infringement, possibly, photographs, specimens of goods, promotion materials and invoices, etc.;
  4. A complaint, containing statement of the cause and facts of the case and claims;
  5. A power of attorney signed (and sealed, if possible) by the legal representative of the trademark registrant.

 

4. Q:

 

A:

What functions and power can the IPO Official Investigator exercise in its investigation to gather evidence?

After it receives a complaint and holds that the exclusive right to use a registered trademark is infringed, IPO Official Investigator, in its investigation to gather evidence, may exercise these functions and power:

  1. To inquire of the interested parties involved, and to investigate the relevant events of the infringement of the exclusive right to use the trademark;
  2. To read and make copy of the contract, receipts, account books and other relevant materials of the interested parties relating to the infringement;
  3. To inspect the site where the interested party committed the alleged infringement of the exclusive right to use the trademark; and
  4. To inspect any articles relevant to the infringement; any articles that prove to have been used for the infringement of another person's exclusive right to use the trademark may be sealed up or seized.

 

5. Q:

A:

 

How is the amount of compensation to an infringee calculated?

In calculating the amount of compensation, an infringee can choose between two methods thereof: one is based on the profit made by the infringer during infringement; and the other is on the losses incurred by the infringee therein. Both may include the appropriate expenses of the infringee for stopping the infringement. If it is difficult to determine the profit or losses, the court shall impose an amount of damages of no more than Rp 1,000,000,000 (one million rupiahs). The lawyer's fee provided for by the relevant state department may be included into damages.

6. Q:

 

A:

 

How are proceedings instituted in the people's court against a case of trademark infringement?

All trademark proprietors may choose to institute proceedings in the people's court. To institute the court proceedings, the following documents and evidence are required:

  1. Valid trademark certificate to prove the lawful rights and interest of the registrant;

  2. Correct name, address of the infringer and its legal representative ;
  3. Evidence of infringement, possibly, photographs, specimens of goods, promotion materials and invoices, etc., which are better to be notarized;
  4. A complaint, containing statement of the cause and facts of the claims;
  5. A power of attorney signed (and sealed, if possible) by the legal representative of the trademark registrant, which should be notarized and certified;
  6. A copy of the infringee's enterprise registration certificate, which should be notarized and legalized.

7. Q:

 

A:

 

Who are the qualified foreign applicants for trademark (hereinafter referring to mark in respect of goods and/or services) registrations in Indonesia?

Any foreigner or foreign enterprise intending to apply for the registration of a trademark in Indonesia shall file an application in accordance with an agreement concluded between the P. R. Indonesia and the country to which the applicant belongs, or according to the international treaty to which both countries are parties, or on the basis of the principle of reciprocity.

8. Q:

 

A:

 

Is a local consultant a must for the foreign applicants to proceed with trademark-related matters before the Indonesia Trademark Office

Yes. Any foreigner or foreign enterprise intending to apply for the registration of a trademark and for any other matters concerning a trademark in Indonesia shall entrust any of such organizations as recognized by the state to act as his or its consultant.

 

9. Q:

A:

 

 

Is the Power of Attorney required to be notarized or legalized?
No. Notarization and legalization of the Power of Attorney and other relevant certificates from a foreign person or foreign enterprise shall be done based on the principle of reciprocity.

 

10. Q:

A:

 

 

Is the International Classification of Goods and Services adopted in Indonesia?
Yes

 

11. Q:

A:

 

 

Is multi-class application available in Indonesia?
Yes

 

12. Q:

 

A:

 

When shall the priority document be submitted to the Trademark Office if priority is claimed in Indonesia?
Certified priority document shall either be submitted together with the filing of the Indonesia application or be supplemented within 3 months from the filing date of the Indonesian application.

 

13. Q:

A:

 

 

Does Indonesia adopt first-to-file principle for trademark registration?

Yes. Where two or more applicants apply for the registration of identical or similar trademarks for the same or similar goods, the preliminary approval, after examination, and the publication shall be made for the trademark which was first filed. Where applications are filed on the same day, the preliminary approval, after examination, and the publication shall be made for the trademark which was the earliest used, and the applications of the others shall be refused and their trademarks shall not be published.

 

14. Q:

A:

 

 

What kinds of signs shall not be used as trademarks?
The following signs shall not be used as trademarks:

  1. those identical with or similar to the state name, national flag, national emblem, military flag, or decorations of the R. Indonesia, or identical with the name of particular site where the central government is located, or the name or shape of a building with symbolic significance;
  2. those identical with or similar to the state names, national flags, national emblems or military flags of foreign countries, unless otherwise consented by the government concerned;
  3. those identical with or similar to the names, flags, emblems or names of international intergovernmental organizations, unless otherwise consented by the organization or there is no likelihood to lead public confusion;
  4. those identical with or similar to the official identification, inspection seal that certifying control and guarantee, unless otherwise authorized;
  5. those identical with or similar to the symbols, or names of the Red Cross or the Red Crescent;
  6. those having the nature of discrimination against any nationality;
  7. those having the nature of exaggeration and fraud in advertising goods;
  8. those detrimental to socialist morals or customs, or having other unhealthy influences;
  9. those having the explanation of the things or services being registered;
  10. The geographical names as the administrative divisions at or above the county level and the foreign geographical names well-known to the public.

 

15. Q:

A:

 

 

What is the valid period for filing a renewal application?
Where the registrant intends to continue to use the registered trademark beyond the expiration of the validity period, an application for renewal of the registration shall be made within 12 months before the said expiration. The period of validity of each renewal of registration shall be 10 years.

 

16. Q:

A:

 

 

What documents are required for renewal application?

An executed Power of Attorney and a copy of the registration certificate.

17. Q:

A:

 

 

What basic documents are required for filing an assignment application?
A Power of Attorney signed by the assignee, an application form signed by both the assignor and the assignee and one copy of the trademark registration certificate.

 

18. Q:

 

A:

:

Shall a change of name application be filed in registrant's initial name or in its new name?

Change of name application should be filed in the registrant's new name.

 

19. Q:

 

A:

 

Can change of name or address be recorded with the Trademark Office against pending applications?

Yes

 

20. Q:

A:

 

Is there any special document required for change of name application?

Yes. When applying for change of name, the applicant shall submit change of name certificate issued by the relevant registry.

 

21. Q:

 

A:

 

Does the registrant have to file change of name/address applications simultaneously for all the marks registered under his or its name?

Yes. When applying for change of name or address, the registrant shall do the same modification in respect of all his registered trademarks.

 

22. Q:

 

A:

 

What are the basic documents required to be filed for an application of a license contract?

A Power of Attorney signed by the licensor, an application form signed by both the licensor and the licensee, a license contract (original or a notarized), and a copy of the registration certificate of the licensed mark.

 

23. Q:

A:

 

What basic contents shall be covered by a license contract?

A license contract should at least cover the following information and terms and conditions:

  1. Name and address of the licensor and the licensee;

  2. The trademark and the registration number of the trademark licensed to use;

  3. The goods/services in respect of which the trademark is licensed to use;

  4. Term of the license (which shall not exceed the validity period of the registration per se);

  5. The party to provide the logos of the trademark licensed to use;

  6. Licensor's right to monitor the quality of the licensee's commodities/services where the licensed mark is used;

  7. Licensee's name and commodity manufacturing place indicated on the commodity where the trademark is licensed to use.

 

24. Q:

A:

 

What is the valid period for filing an opposition?

An opposition should be filed within three (3) months from the date of publication of a preliminarily approved trademark. (For example, if a trademark is published on March 7, 2000, an opposition, if any, should be filed before June 6, 2000.)
No extension of time can be obtained for filing an opposition.

 

25. Q:

 

A:

 

Who can file an opposition against a trademark that has been preliminarily approved and published on Trademark Gazette?

Any person can file an opposition.

26. Q:

 

A:

 

Can the applicant file a response to rebut an opposition against his or its preliminarily approved trademark?

Yes, the applicant may file a response within two (2) months from receiving date of the notification of the opposition from the Trademark Office.