On 3 February 2021, the Ministry of Law and Human Rights of Republic Indonesia issued an amended implementation regulation to support the provisions of the current Trademark Law No. 20 of 2016. This implementation regulation is No. 12 of 2021 (the “Regulation”) was issued to accelerate the timeline for prosecuting a trademark application.
In Article 12 of the Regulation, the ministry amended the provision that relates to the examination process for any mark that is not being opposed. Previous regulation stipulates that for any trademark application that is not being opposed, the examination shall start 30 days after the publication period ends. Such provision is removed in the new regulation; therefore, the examination can effectively begin as soon as the publication period ends.
The new regulation also expedites the examination process in substantive examination. In the previous regulation, the time period is 150 working days – which is around 7 months. The current regulation stipulates that the examination must be completed in 90 working days (around 4-5 months) if there is an opposition. If there is no opposition, the substantive examination shall be completed in 30 working days (around 1.5 months).
Since all submissions are done online and the e-filing system had been integrated, registry officials are able to receive documents directly on the same day, without any delay, so the verification or further examination process on matters relating to trademark can commence immediately. The advantage of this shorter period of examination to the trademark proprietor or applicant is to have the examination result and registration status much faster. However, in the event that the trademark proprietor or applicant needs extra time to decide on overcoming the refusal, they could no longer request the examiner’s leniency to provide some abeyance in the examination as now the time period is shorter and strict.
Other than that, the Ministry has also stipulated in the new Regulation that a mark containing a functional shape in nature cannot be registered. This relates to the device mark, the device, or logo associated with it must not be the common logo that has a common function. The distinctiveness of the mark remains an important key to have a mark successfully registered.
The highlight of the new Regulation is the shorter period of the examination stage. It is certainly very beneficial to each trademark proprietor. However, shorter time also limits the trademark proprietor from negotiating or having alternative business plans regarding the mark if it is refused due to opposition.