The Legal Basis of Filing the Opposition in Indonesia

The legal ground would be the Article 24 of Indonesian Trademark Law, juncto the Article 4, 5, and 6 Paragraph 1 letter (b).

Article 24 Paragraph 1 & 2 of the Indonesian Trademark Law No. 15 of 2001

(1) During the period of announcement referred to in Article 22, any person or legal entity may file an objection to an Application, in writing to the Directorate General

(2) The objection referred to in paragraph (1) may be filed where there is sufficient reason accompanied by evidence that the Mark for which registration is requested is a Mark, which under this Law shall not be registered or shall be refused.

Article 4 Paragraph 1 of Indonesian Trademark Law No. 15 of 2001, “A Mark shall not be registered on the basis of an Application by an Applicant having bad faith”.

Further, the Article 5 Paragraph 1 of Indonesian Trademark Law No. 15 of 2001, “A Mark shall not be registered if it contains one of the following elements: (a)Contradicts the prevailing rules and regulations, religious morals, or public order; (b) Having no distinguishing features; (c) Having become public property; or (d) Constituting information or related to the goods or services for which registration is requested”.

Article 6 paragraph (1) letter (b) of the Indonesian Trademark Law No. 15 of 2001, “An Application for registration of a Mark shall be refused by the Directorate General if the relevant Mark has a similarity in its essential part or in its entirety with a well-known mark owned by another party for the same kind of goods and/or services”.

Therefore, we should argue that the Client has used the said trademark for several years in worldwide by providing the sufficient evidence to the Examiner.

In addition if the trademark is part of the company name, as stated by the Article 6 Paragraph 3 letter (a) of Indonesian Trademark Law No. 15 of 2001, “An Application for registration of a Mark shall also be refused by the Directorate General if it constitutes or resembles the name of a famous person, photograph, or the name of a legal entity belonging to another party, except with the written consent of the entitled party”.

For filing the opposition is required documents namely :

  • One Power of Attorney simply signed by the Applicant (a form is enclosed);
  • Copies of your client’s relevant trademark registration certificates in, at least, five countries including home registration;
  • A worldwide list of your client’s relevant trademark registration;
  • A copy of your client’s relevant trademark registration certificates in Indonesia;
  • Evidences such as the proof of first use of the relevant marks, brochures, advertisements and/or promotions in the origin country or other countries in which the related trademarks have been registered

The process of filing the opposition until the decision on the oppositions is issued by the Trademark Office taking 1 to 1,5 years.

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