The Madrid System for international trademark registration provides the opportunity for a simplified and cost-effective way to register trademarks in multiple countries through a single application. Indonesia joined the Madrid System in 2018, and in 2024 alone, it received over 8,600 applications through this system. Despite the system’s effectiveness, it is important for trademark owners to be aware of the potential risks of refusal that can arise during the process of registration. Trademark applicants must pay close attention to these critical points when designating Indonesia.
Appointing a Local Representative to Respond
An applicant or representative of an international registration (IR) application that has been provisionally refused must appoint a local Indonesian representative in order to submit a response to the provisional refusal. This appointment is solely for the purpose of responding to the refusal in Indonesia; it is not necessary if the IR has not received any rejection. Furthermore, the local representative should not be registered with WIPO, as doing so would affect representation across all designated countries.
Timing
When it comes to calculating the deadline for responding to a provisional refusal, there is a discrepancy between the methods used by the DGIP and WIPO. Under the Indonesian Trademark Law, trademark owners can file a response within 30 working days, excluding weekends and national holidays. However, the WIPO cover letter accompanying the DGIP’s provisional refusal notice specifies both the start date and the deadline for responding to the notification, which is calculated as 30 calendar days, including weekends and national holidays. Therefore, a response to the provisional refusal of IR should be submitted in accordance with the WIPO cover letter to prevent any formality issue.
Grounds for Refusal
After an IR application is published in Indonesia’s Trademark Gazette, it undergoes substantive examination by the Directorate General of Intellectual Property (DGIP) examiners. The trademark is primarily assessed against absolute and relative grounds for refusal.
IR applications are usually rejected based on relative grounds, specifically similarity with a prior registered mark in Indonesia. To mitigate potential risks and formulate an effective strategy, it is advisable to conduct a trademark search in the target countries prior to filing.
Overcoming a Refusal
Assessing the status of the cited mark is important to determine the strategy to overcome the refusal. Below are several strategies to overcome the refusal.
- Submit a response. A response to the refusal may be submitted by presenting arguments based on differences in visual appearance, phonetics, concept, and nature of the goods.
- Delete the conflicted class. A rejection of one class in a multiple-class application may delay the examination of all applied classes. If the refusal only affects certain classes and not the entire application, a trademark owner may consider deleting the rejected classes to allow the registration process to proceed for the nonconflicted classes.
- Letter of consent or trademark assignment. The DGIP encourages applicants to support applications by providing any evidence of consent. Therefore, approaching the owner of the cited mark to obtain a letter of consent by allowing both marks to be co-registered could be an option to overcome the refusal, at the discretion of the examiners. If the IR application is refused due to similarity with a prior registered mark owned by a company within the same corporate group, the trademark owner may also file a recordal of assignment to transfer ownership of the cited mark so that both marks are owned by the same holder.
- Amend and refile the trademark application. Refiling a trademark application with additional distinctive elements or by excluding certain goods can be an effective strategy to eliminate similarities with the cited mark. If the cited mark is approaching its expiration date, the trademark owner may consider monitoring its status. Should the mark not be renewed, refilling the application through the national route could be a viable option. Alternatively, renouncing the Indonesia designation and submitting a new subsequent designation of Indonesia can be applied.
- Court action. As a last resort, a trademark owner may initiate legal proceedings against the cited mark. Available court actions include filing a nonuse deletion and cancellation lawsuit based on similarity or bad faith. These cancellation proceedings are handled by Indonesia’s Commercial Court.
Response Examination Process
Once a response is submitted, it will be reexamined by the DGIP examiner within approximately 3–6 months. This timeframe may vary depending on the workload of the examiner. If the response is accepted, the application will proceed to the registration stage, and the DGIP will issue a statement of grant directly to the registered representative through the WIPO.
If the response is rejected, the DGIP examiner will issue a notice of permanent refusal to the local representative and the registered representative. The applicant is entitled to file an appeal before the Trademark Appeal Commission within 90 working days from the date of notification. If no appeal is filed, the applicant is deemed to have accepted permanent refusal. If an appeal is submitted, it will be reviewed by the Trademark Appeal Commission within approximately 4–6 months.
Conclusion
Navigating the trademark registration process in Indonesia through the Madrid System can be challenging, but with the right strategies and local expertise, it is entirely manageable. By understanding the grounds for refusal and exploring various options to overcome them, trademark owners can significantly increase their chances of successful registration. Consulting with local attorneys and staying informed about the latest developments is crucial to ensure a smooth and efficient registration process. Every trademark application is unique, and a tailored approach is key to achieving your business goals in Indonesia.
