Foreign Trademark Registration in Indonesia, Is it Possible?

Corporate Secretary Service Indonesia – The need for global trade opens up opportunities for businesses to become distributor agents between countries. So that the distributor receives the right to use the brand of a foreign company holding rights to the brand in his country to be able to use the brand in Indonesia.

For example, you are a trademark holder of X from a foreign company from Singapore who is appointed as the sole distributor in Indonesia. So, is it necessary to register brand X again in Indonesia, considering that the brand has already been registered in the country of origin, what about the license agreement? 

Rights to Trademark

We need to first understand the definition of trademark rights as stipulated in Article 1 number 5 of Law Number 20 Year 2016 on Trademarks and Geographical Indications (“Merek dan Indikasi Geografis / MIG Law”):

The right to a trademark is an exclusive right granted by the state to the owner of a registered trademark for a certain period of time by using the trademark itself or granting permission to other parties to use it.

Now, the protection of the right to trademark is territorial in nature. That is, the protection of trademark rights only applies in the country where the trademark is registered. Thus, COCO trademarks that have been registered in Singapore only get legal protection in Singapore, while in Indonesia the trademark is not protected by Indonesian law.

Thus, if the trademark is to be given legal protection in Indonesia so that it cannot be used by other parties, then the trademark must be registered at the Directorate General of Intellectual Property of Indonesia (“DG KI”). Legal protection of trademarks through trademark rights will only take effect after the trademark is registered (Article 3 of the MIG Law).

Not to worry, when a country has become a member of the Madrid Protocol, entrepreneurs can register their trademarks in 191 member countries of the World Intellectual Property Organization (WIPO). In Indonesia itself, this has been legalized by the enactment of Presidential Regulation No. 92/2017 on the Ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 1989 (“PR 92/2017”).

Read Also: Understanding What is PIRT and Its Products

Registration of Foreign Marks in Indonesia

Furthermore, as mandated by Article 52 paragraph (4) of the MIG Law, further provisions regarding the Madrid Protocol are regulated in Government Regulation of the Republic of Indonesia Number 22 of 2018 concerning International Registration of marks Based on the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“GR 22/2018”).

In Article 10 of PP 22/2018, it is regulated as follows:

1. The Minister receives the International Registration from the International Bureau.
2. After receiving the International Registration as referred to in paragraph (1), the Minister shall make an announcement.
3. The announcement as referred to in paragraph (2) shall be made in accordance with the provisions of the Law.
4. For the International Registration as referred to in paragraph (1), the Minister receives the International Registration fee from the International Bureau.

In the MIG Law, it has also been regulated regarding the application for international trademark registration in Article 52 paragraph (1) of the MIG Law. It is important to discuss that an application for international trademark registration can be:

• An application originating from Indonesia addressed to the international bureau through the Minister of Law and Human Rights (“Minister”); or
• An application addressed to Indonesia as one of the destination countries received by the Minister from an international bureau.

The International Bureau here referred to is theWorld Intellectual Property Organization (Article 1 point 3 of PP 22/2018). Furthermore, after the trademark is registered, a substantive examination will be carried out in accordance with the provisions of the MIG Law (Article 12 of PP 22/2018).

Then the Minister submits the results of the substantive examination which can be registered or rejected to the International Bureau within a period of no later than 18 months from the date of notification of International Registration (Article 13 of PP 22/2018).

As stated in Article 14 of GR 22/2018, in the event that the result of the substantive examination of the International Registration is registered, the Minister:

1. Deliver a statement of granting protection to the International Bureau;
2. Issue a trademark certificate; and
3. Make an announcement in the Official Gazette of the trademark.

So, the foreign company from Singapore that holds the rights to the trademark must register its trademark in Indonesia through the International Registration method according to the Madrid Protocol as explained earlier. After that, it will enter into a license agreement with you as the sole distributor in Indonesia.

Don’t worry about developing your business by setting up a company in Indonesia, because Portcorp is here as a solution for your business, also when you need Trademark registration. Portcorp is your comprehensive corporate secretary service in Indonesia. With our presence, you can get a dedicated company secretary to support you to what you need. Our company secretaries will track deadlines and file paperwork so your business keeps running smoothly. Contact us now on +6221-5020-8090 for your business succeed in the future!