Since the geographical indication general provision was introduced in 2016 (under Law No. 20 of 2016 concerning the Trademark and Geographical Indication Law), there was no specific stipulation from the Indonesian government to support the law, until June 25, 2019, when the government enacted Ministry Regulation No. 12 of 2019 implementing the specific provisions regarding geographical indications.
The regulation stipulates that the geographical indication application must be submitted to the Ministry of Law and Human Rights in the Bahasa Indonesia form, directly by the applicant or its counsel. The form must contain the filing date, name and address of the applicant, name and address of the appointed counsel, the title of the geographical indication, the related goods, translation and/or transliteration and also the GI label. The application shall be filed along with the required documents which include a copy of a certificate from a foreign country if it was acknowledged or recognized by another country, a power of attorney (if it is filed through counsel and a description of the GI.
The description of the geographical indication must include the following: the applicant information of the geographical indication, the name of the geographical indication, the product covered by such geographical indication, an explanation of the characteristics and quality of the geographical indication that may differentiate goods in the same category, any information about the geographical indication and factors that give effect to the quality or characteristics of the goods involved, the regional borders covered by the geographical indication, a brief historical background of the geographical indication and the societal recognition. Further, the description must contain information on the production such as the processing and fabrication procedure, the method used to test the quality of the goods and the information on the label used on the goods which shows the geographical indication. The Registrar undertakes examination of the geographical indication application within 30 working days after the filing date. If there is deficiency in formality requirements, the Ministry will notify the applicant in writing.
This is similar with the practice for trademark applications where the Registrar provides three months for the applicant to fulfill the requirements and, if not complied with, the application is deemed withdrawn. Once the formality requirements are completed, the Registrar allocates an application number followed by publication in the gazette for opposition purposes. The period of the publication is two months; any interested party objecting to the GI may file an opposition. The applicant will have an opportunity to submit a counter-statement within two months from acceptance of the notice of opposition.
Unlike trademark provisions, the regulation stipulates that the Ministry of Laws and Human Rights shall notify the applicant to file a request for substantive examination within 10 working days after the expiration of the publication period. The request for substantive examination must be submitted along with the applicable official fees within 60 working days from the date of the Ministerial notification. If no request is submitted, the geographical indication application is considered withdrawn.
The substantive examination takes place over a period of 150 working days from the request for examination. For geographical indication applications originating from within Indonesia, the examination team will visit the location where the geographical indication goods are generated to assess the congruence between the geographical indication application documents and the actual condition in the location. If the examination team considers that the geographical indication is compatible, then the Ministry will grant and register the GI. Once the GI is registered, it will not be available to the public to use it freely. For foreign geographical indication applications, protection is given for as long as it is protected by law in the originating countries. In the event that the application is refused by the Registry, the applicant must respond to the refusal. If it is refused permanently, the Registry provides an opportunity for the applicant to file an appeal to the Appeal Commission.
If any interested party wishes to use the GI goods that have been registered, they must submit a use recordal request to the Ministry, along with the official fee, the recommendation from the geographical indication rights owner, a power of attorney (if it is submitted through proxy), a copy of the geographical indication registration certificate and a statement of authenticity. If the requirements of the use recordal request are completed, such recordal will be given an acceptance date and will be published on the gazette for two months. If the publication period has passed, then the Ministry will issue an enactment concerning the GI authorized user.
Additionally, the regulation also provides for geographical indication foreign applications based on international agreements between Indonesia and other countries, bilateral or multilateral. The registration procedure for such geographical indication applications based on agreements must be conducted by considering the points of: the validity of the agreement and the exchange proposal of any registered geographical indication rights in origin countries. During the publication of the geographical indication, any conflicting party may file an objection based on the following grounds: the geographical indication contradicts the national ideology, applicable laws and regulations, morality, religion, decency or public order; the GI is similar to any generic name, name of plant varieties or type of animals which misleads the public; or is entirely or partially a homonym of the GI rights that have been registered in the Indonesian registry. The geographical indication based on an international agreement shall be terminated in the event that the geographical indication in the originating countries expires; or if the related international agreement has been terminated.
The regulation also provides that after the geographical indication has been registered, there is still a monitoring procedure performed by the Registry, to ensure that the reputation, quality and characteristics of the registered geographical indication is not diluted, and to avoid any unauthorized use. The procedure is performed by the central government, regional government, or society. If these parties find some facts or information evidencing the incompatibility or misapplication of the geographical indication, such parties must provide a recommendation to the Ministry to be followed up. If the geographical indication owner does not respond to the recommendation, the related geographical indication may be removed from the Registry.
Finally, the regulation stipulates that where geographical indications are also filed as a trademark, such trademark registration shall be cancelled or deleted entirely or partially by the Ministry after two years upon registration of the geographical indication. However, this provision does not apply to trademarks which have been registered for more than five years before the GI registration (before the GI laws came into effect).
By: Denise Mirandah and R. Prista Devina
A version of this article first appeared in Asia IP. For more information, please visit http://asiaiplaw.com.