Regulations on International Trademark Registration in Indonesia

PERTANYAAN

I am the holder of a foreign brand of a foreign company and I am also appointed as the sole distributor in Indonesia. The question is, do I need to register the foreign brand again since it has already been registered in my country? Even if I have to re-register, then do I have to do laboratory checks again for the formula of the goods at the Indonesian Food and Drug Authority/BPOM and the Ministry of Health?

INTISARI JAWABAN

The protection of trademark rights is territorial. Thus, if the trademark is to be granted legal protection in Indonesia, it must be registered at the Directorate General of Intellectual Property of Indonesia (“DG IP”).

What are the rules regarding the application for international trademark registration?

Please read the review below for a further explanation.

ULASAN LENGKAP

This article is an English translation of Aturan Pendaftaran Merek Internasional di Indonesia written by Dian Dwi Jayanti, S.H. on Friday, 4 August 2022.

This article is an update of the article entitled Foreign Trademark Registration in Indonesia written by Abi Jam'an Kurnia, S.H. and was first published on Friday, 31 August 2018.

All legal information available on Klinik hukumonline.com has been prepared for educational purposes only and is general in nature (read the complete Disclaimer). In order to obtain legal advice specific to your case, please consult with Justika Partner Consultant.

Protection of Trademark Rights in Indonesia

From the condition you stated above, we assume that you received the right to use the trademark/brand from a foreign company holding the rights to the trademark in its country to be able to use the trademark in Indonesia.

It is necessary to first understand the definition of the right to trademark or known as “mark rights” as stipulated in Article 1 number 5 Law 21/2016 which reads:

Mark Rights are exclusive rights that are granted by the state to the owner of the Mark that is registered for a certain period by using the Mark for self-use or granting permission to other parties to use it.

You need to know that the protection of trademark rights is territorial. Thus, if the trademark is to be given legal protection in Indonesia, the trademark must be registered at the Directorate General of Intellectual Property of Indonesia ("DG IP").

Basically, trademark registration provides legal protection for trademark rights holders. This is confirmed in Article 3 Law 21/2016, namely:

Mark rights shall be obtained after the mark is registered.

So even though the trademark owned by the foreign company has been registered in its country, it does not necessarily mean that the trademark has been registered in Indonesia.

International Trademark Registration in Indonesia

In its development, Indonesia has officially become a member of the Madrid Protocol ratified through Presidential Regulation 92/2017, an international agreement regulating the administrative system of international trademark registration for its members.

Article 52 section (1) Law 21/2016 has also regulated the application for international trademark registration may be in the form of:

1. an application that is originating from Indonesia and is addressed to an international bureau through the Minister of Law and Human Rights (“Minister”); or
2. an Application that is addressed to Indonesia as one of the destination countries that is received by the minister from an international bureau.

Furthermore, Article 10 Government Regulation 22/2018 regulates the procedure for international trademark registration as follows:

1. The Minister shall receive International Registrations from the International Bureau.
2. After receiving the International Registrations, then the Minister shall
   undertake an announcement.
3. The announcement shall be implemented in accordance with the
   provisions of the law.
4. Toward the International Registrations, then the Minister shall receive
   International Registration fee from the International Bureau

Furthermore, a substantive assessment will be conducted after the trademark is registered.[1] Then, the minister submits the results of the substantive assessment which can be either registered or rejected to the International Bureau within a period of no later than 18 months from the date of notification of international registration.[2]

In the event that the result of the substantive assessment of the international registration is registered, the minister:[3]

1. submit the protection granting statement to the International Bureau;
2. issue the certificate of Mark; and
3. undertake an announcement in the Official Gazette of Marks.

In response to your question, we are of the opinion that the foreign company holding the rights to the foreign trademark/brand can register the trademark in Indonesia through the international registration method under the Madrid Protocol as explained above.

Then, if the product to be registered is a food product and/or medicine, it also needs to be registered with the Indonesian Food and Drug Authority a.k.a. Badan Pengawas Obat dan Makanan (“BPOM”) for prior review before the product can be distributed in Indonesia.

These are the answers we can provide about international trademark registration procedures in Indonesia, we hope you will find them useful.

Legal Basis:

1. Law Number 21 of 2016 on Marks and Geographical Indications;
2. Regulation of the Government in Lieu of Law Number 2 of 2022 on Job Creation which has been enacted into law under Law Number 6 of 2023;
3. Presidential Regulation Number 92 of 2017 on the Ratification of Protocol Relating to the Madrid Agreement Concerning the International Registration of Mark, 1989;
4. Regulation of the Government Number 22 of 2018 on International Registration of Marks Based on the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

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[1] Article 12 Regulation of the Government Number 22 of 2018 on International Registration of Marks Based on the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Government Regulation 22/2018”).

[2] Article 13 Government Regulation 22/2018.

[3] Article 14 Government Regulation 22/2018.