How to Claim a Registered Trade Mark?
Indonesia has become one of the most attractive investment destinations in Southeast Asia. With its growing economy and diverse market opportunities, many local investors and businessmen are eager to expand their businesses in this vibrant country. However, one of the significant concerns they face is navigating the trademark regulations in Indonesia. Understanding how to claim a registered trademark is crucial for protecting one’s brand and ensuring a competitive edge in the market.
The importance of trademark registration
Trademark registration is essential for any business looking to establish its brand identity. A trademark serves as a symbol of quality and reputation, distinguishing a company’s goods or services from those of others. In Indonesia, the basic principle governing trademark registration is “first-to-file.” This means that the exclusive rights to a trademark belong to the first entity that files for registration, regardless of prior use.
This principle can lead to disputes, especially when multiple parties claim rights to the same or similar trademarks. A notable case that highlights this issue is the trademark dispute involving IKEA in 2016. The case began in 2013 when PT Ratania Khatulistiwa filed a lawsuit against Inter IKEA System BV, claiming that they were not entitled to use the ‘IKEA’ brand for trademark classes 20 and 21 in Indonesia. Ratania asserted that they had registered the ‘IKEA’ trademark first, which they claimed was an abbreviation of “Intan Equator Esa Abadi.”
Trademark Registration in Indonesia
In Indonesia, the trademark registration process is governed by the Trademark Law, which outlines the necessary steps and requirements for securing a trademark. The law emphasizes the importance of filing for registration as soon as possible to avoid potential conflicts with other businesses.
The Registration Process
- Conduct a Trademark Search: Before filing for registration, it is advisable to conduct a comprehensive trademark search to ensure that the desired trademark is not already registered or in use. This can help avoid potential legal disputes down the line.
- Prepare the Application: Once the trademark search is complete, the next step is to prepare the application. This includes providing details such as the trademark logo, the goods or services it will represent, and the applicant’s information.
- Submit the Application: The application must be submitted to the Directorate General of Intellectual Property (DJKI) under the Ministry of Law and Human Rights of the Republic of Indonesia. The application will be examined for compliance with the legal requirements.
- Examination and Publication: After submission, the trademark will undergo an examination process. If approved, it will be published in the Official Trademark Gazette, allowing third parties to oppose the registration if they believe it infringes on their rights.
- Registration and Certificate Issuance: If no opposition is filed within the stipulated period, the trademark will be registered, and a certificate will be issued to the applicant, granting them exclusive rights to use the trademark.
Cancellation of Registered Trademarks
A registered trademark may be cancelled if it has not been used for three consecutive years in goods and / or services trade from the date of registration or use. In accordance with Article 74 paragraph (1) of the Trademark Law, a party who wants to claim the brand may file a lawsuit to the commercial court. In IKEA case, the brand had been registered since 2006 and 2010. However, when Ratania submit IKEA brand for its company in 2013, IKEA retail had not yet operated in Indonesia.
If a registered mark has not circulated in the market for a period of three years, a third party wishing to register the mark may file a claim for the registered trademark registration with the terms, one of which is evidence of unused trademarks in the market.
Therefore, an investigation needs to be done to confirm it. The investigation can be done by the third party itself, but will spend a lot of time. Therefore, it is strongly advised to use the services of a trusted and experienced investigator.
Investigating Unused Trademarks
If a registered mark has not circulated in the market for three years, a third party wishing to register the mark may file a claim for the registered trademark. One of the key requirements for this claim is providing evidence of the unused trademark in the market.
The investigator will then initiate an investigation by examining the database of the Directorate General of Intellectual Property, Ministry of Law and Human Rights of the Republic of Indonesia (DJKI) to find out the party who registered the brand. From the initial examination, the name of the registrant, address, product classification, brand logo, registration date, and expiry date of registered trademark can be obtained. Based on the initial information, an in-depth examination, via both field investigation and media search, will be conducted.
Field investigations are usually conducted in major cities in Indonesia depending on client expansion needs and focus on retail. The results of the investigation, including evidence, will be reported in the form of a signed statement from the retail party. This statement will be submitted as evidence to challenge the cancellation of the mark in the commercial court.
Claiming a registered trademark in Indonesia involves navigating a complex legal landscape. Understanding the principles of trademark registration, conducting thorough investigations, and preparing for potential legal proceedings are essential steps for any business looking to protect its brand.
Source:
https://www.cnnindonesia.com/ekonomi/20160212131924-92-110555/ikea-klaim-telah-daftarkan-ulang-merek-dagang
