You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

November 22, 2016

Indonesia’s Amended Trademark Law: Major Change to Opposition Process

Subscribe to Updates
Informed Counsel

The Indonesian Parliament approved amendments to Indonesia’s Trademark Law on October 27 this year. Indonesia’s amended Trademark Law will take effect on or before November 26, 2016, introducing a number of significant changes to the publication and substantive examination stages, among other things.

Under the new law, there is now a two-month publication stage before examiners conduct the substantive examination of a trademark application. All trademarks that pass an initial formality examination will proceed directly to publication and will be open to potential oppositions. This change is intended to lessen the burden on examiners by allowing them to review any oppositions at the same time as conducting the substantive examination on confusingly similar trademarks and matters of distinctiveness.

Examiners are still obligated to, on their own initiative, reject a bad-faith or confusingly similar application during the substantive examination stage. As applications will be published before they are substantively examined, time will not be wasted by “reexamining” marks when oppositions are filed. Prior to the amendments, an examiner who examined an application also had to review any oppositions that were filed during the publication stage, which took place after the substantive examination stage.

Under this change, the only opportunity that trademark owners have to oppose a third party’s application is during the two-month publication stage. While this push for greater efficiency is laudable, all examinations will fall within examiners’ subjective discretion, which may lead to unpredictable outcomes.

Although the specific impact of this procedural change remains uncertain, it is possible that the new opposition process may result in more bad-faith applications. This is especially problematic in Indonesia, where trademark squatters are already a major issue. Unless trademark owners have in place an effective system for monitoring trademarks in local publications, bad-faith applications may escape through to registration.

In order to manage risk, trademark owners should pay considerably more attention to monitoring published trademarks that may be confusingly similar to their own trademarks, so that they can file oppositions in time to protect their own rights. Trademark owners can do this by supporting their oppositions with relevant evidence for the examiner’s consideration. In Indonesia, it is particularly important for trademark owners to proactively defend their rights during the opposition process because once a confusingly similar mark has been successfully registered, the only recourse available is to proceed with invalidation/cancellation through the Court of Commerce—a procedure that is costly and complicated.

While the new approach to the publication and opposition process is by far the most notable change, Indonesia’s new Trademark Law will introduce a number of other changes to existing provisions. Notably, there will now be a six-month grace period for renewal of a trademark after expiration. In addition, the new Trademark Law will introduce provisions on nontraditional marks and the Madrid Protocol, and it will clarify certain procedures such as the process of obtaining a preliminary injunction. These changes appear to be a step in the right direction to developing clearer and more effective trademark protection and enforcement in the country.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

August 4, 2026
Intellectual property (IP) protection sometimes hinges on fame and recognition. However, this alone will not always be sufficient to overcome an IP dispute when it involves contractual obligations or registered rights. Below are five cases from around the world that tackle some of the basic issues in IP registration, ownership, commercialization, and enforcement. 1. USA: Taylor Swift Trademark Application Refused Taylor Swift recently filed a trademark application to register “The Life of a Showgirl,” which is the title of her 12th studio album. When examining a trademark application, the examiner considers various factors before deciding whether it should be registered. One of these factors is whether there is a likelihood of confusion (i.e., would a regular consumer mistake the origin of the trademark). In Taylor Swift’s case, the US Patent and Trademark Office (USPTO) decided that that there would be a risk of confusion. This decision was based on the existing registered trademark, “Confessions of a Showgirl,” owned by Maren Wade, which was registered in 2015. The USPTO refused Taylor Swift’s application based on the shared key distinctive element “of a showgirl,” the lack of sufficient distinguishing terms, the marks being used in overlapping markets (entertainment and performances), and because consumers may assume a common commercial source. Maren Wade then filed a lawsuit in California against Taylor Swift and her affiliated companies, arguing that Taylor Swfit’s branding is confusingly similar in structure, wording, and overall commercial impression to her registered mark. She is also drawing on the USPTO’s refusal of Taylor Swift’s application to support her argument of a likelihood of confusion. A judgment has not yet been reached in this case, but it serves as an important reminder of the importance of satisfying the essential elements required for IP registration. 2. Australia: Katy Perry v. Katie Perry In
Read More
July 27, 2026
Vietnam’s new E-Commerce Law, which took effect on 1 July 2026 along with its implementing Decree No. 248/2026/ND-CP (Decree 248), marks a significant development in the country’s approach to online intellectual property (IP) enforcement, reflecting a clear shift from a reactive model of intermediary liability to one that expects platforms to play a more active role in preventing infringement. From notice-and-takedown to platform responsibility The most significant change introduced by the E-Commerce Law is the transformation of the legal role of e-commerce platforms. The existing safe harbor provisions under the IP Law and the copyright notice-and-takedown regime established by Decree 17/2023/ND-CP (Decree 17) largely required intermediaries to act only after receiving notice of infringement. Once infringing content had been removed, the platform’s legal obligation was generally considered fulfilled. The new legislation adopts a fundamentally different approach. Article 17 of the E-Commerce Law requires intermediary platforms to screen information relating to goods and services before publication in order to prevent listings involving counterfeit or IP-infringing goods, and goods of unknown origin. Rather than relying exclusively on complaints from rights holders, platforms are now expected to implement preventive measures before infringing listings become publicly available. Decree 248 further requires platforms to update keyword filters based on recommendations issued by competent authorities. These filtering mechanisms are intended to prevent prohibited listings from appearing on the platform and represent a further move away from a purely complaint-driven enforcement model. The legislation also introduces Vietnam’s first statutory stay-down obligation. Under the E-Commerce Law and Decree 248, major digital platforms must maintain automated systems capable of reviewing, warning against, and removing unlawful listings while also implementing measures to prevent repeat violations, defined under Decree 248 as conduct that has previously been identified and handled by the platform, but continues to recur. This obligation addresses one
Read More
July 27, 2026
Tilleke & Gibbins’ intellectual property specialists have authored the Thailand chapter of Trade Secrets 2026 from Chambers and Partners. This global guide examines the legal frameworks governing trade secret protection, enforcement, and litigation across jurisdictions worldwide. The Thailand chapter provides a comprehensive overview of the country’s legal regime for protecting confidential business information, covering the legal framework, trade secret misappropriation, litigation procedures, remedies, and dispute resolution. Some topics covered include: Protectable trade secrets Reasonable measures to maintain secrecy Employee confidentiality Trade secret licensing Civil and criminal remedies Litigation procedures and injunctions Damages and other remedies Mediation and arbitration The guide also examines practical issues relating to safeguarding trade secrets, defending against allegations of misappropriation, and managing trade secret disputes in Thailand. Chambers and Partners’ Global Practice Guides provide in-house counsel with authoritative commentary on practical legal issues affecting business, enabling readers to compare legislation and procedures across multiple jurisdictions. The Thailand chapter of Trade Secrets 2026 is available as a PDF through the button below. The full guide can be accessed for free on the Chambers and Partners website.
Read More
July 27, 2026
In March 2025, Thailand’s Central Intellectual Property and International Trade Court (IP&IT Court) issued a landmark judgment in favor of Luckin Coffee, China’s leading retail coffee chain. The judgment marked a significant turnaround following earlier trademark litigation involving Luckin Coffee from 2021 to 2023 that had generated widespread public attention and raised questions about the protection available to legitimate foreign brand owners in Thailand. In a significant subsequent development, Thailand’s Court of Appeal for Specialized Cases has now affirmed the IP&IT Court’s judgment in its entirety. The appellate decision brings clarity to one of Thailand’s most closely watched trademark disputes. Significantly, this is the first case in Thailand to formally recognize the trademark squatting principle. The Court of Appeal confirmed that Luckin Coffee has a better right to the disputed mark and ordered cancellation of the defendants’ trademark registration—a key application of the “better right” doctrine. The court also upheld the substantial damages awarded at first instance, providing important guidance on assessing harm from systematic trademark squatting. Award-Winning Judgment Affirmed in Its Entirety The significance of the first-instance judgment extended beyond the outcome for Luckin Coffee. The IP&IT Court judgment was subsequently recognized in the IP&IT Court’s Distinguished Judgment Awards in 2025, reflecting the complexity, novelty, and legal significance of the issues considered in the case. The defendants nevertheless appealed the judgment, challenging several key aspects of the IP&IT Court’s decision. Luckin Coffee continued to entrust Tilleke & Gibbins as their sole attorney to pursue the case at the appellate level. After considering the defendants’ appeal and Luckin Coffee’s submissions in response, the Court of Appeal affirmed the first-instance judgment in its entirety. The judgment was announced on July 8, 2026. Better Right to the Marks The Court of Appeal confirmed Luckin Coffee’s superior rights. The orders include cancellation
Read More