EC Circular: CHANGES TO PROSECUTION AND RENEWAL PROCEDURE AMONG RECENT AMENDMENTS TO INDONESIAN TRADE MARKS LAW
The publication of trade mark applications for opposition has been brought forward before substantive examination, while late renewal of trade mark registrations has been made available, as part of recent amendments to Indonesian trade marks law which came into force on 26 November 2016.
Publication: For Indonesian trade mark applications filed under the old law, the three-month publication period following the substantive examination stage will continue to apply. However, applications filed under the new law will first be published (i.e. right after passing initial formalities examination) for a shorter two-month period, and only subsequently examined as to substance taking into account any oppositions during the opposition period. This streamlines the prosecution of applications by consolidating any substantive examination issues for an examiner’s review at the same stage of proceedings, thus avoiding the protraction under the old law of a further (post-substantive examination) review of any oppositions filed. Trade mark owners should take note of this important update which necessitates greater vigilance in their monitoring of conflicting marks in Indonesia for possible opposition purposes, given the earlier triggering of the publication stage and the shortened opposition period to boot.
Renewal: Unlike the old law, which required any filing for renewal of a registered trade mark in Indonesia to be within 12 months prior to its expiry date without any “grace period”, the renewal period under the new law starts from 6 months prior to the expiry date, and extends to 6 months after expiry subject to a penalty surcharge for late renewal.