In this era of globalization, brand identity has become one of the most valuable assets for businesses and companies. Not only as a tool to differentiate products or services from competitors, but also as a representation of the values and quality offered to consumers.
Well, speaking of brands, do you still remember the case that grabbed public attention a few years ago, namely the use of the famous “Superman” brand?
Superman, who we know as a character created by DC Comics, was once involved in a brand dispute with a local company in Indonesia engaged in the production of wafer-type snacks, namely PT Marxing Fam Makmur.
DC Comics was surprised when it learned that there was a trademark that had been registered under the name Superman by PT Marxing. It also filed a trademark cancellation lawsuit to the Central Jakarta Commercial Court.
Unfortunately, the lawsuit could not be accepted by the Panel of Judges because it was a cumulation that was not related to each other, making it vague or unclear.
In addition, it turns out that in trademark registration there are also two international principles and recognized throughout the world, namely the principle of first to file or who first register is considered as the owner of the rights to the trademark concerned and the principle of territoriality where trademark protection is only valid in the country where the trademark is registered which means no protection in other countries that are not registered.
Thus, PT Marxing Fam Makmur, which registered the Superman trademark for classes 30 and 34 since 1993, is considered the holder of the Superman trademark for these classes in Indonesia. The company’s trademark protection does not apply in other countries if it does not register it.
This then makes no matter how famous the trademark owned by a person or business entity, it must still be registered not only in the owner’s country but also in other countries.
So, does this mean that brands owned by foreigners can be registered in Indonesia? And can foreign brands that do not have a legal entity in Indonesia register a brand in Indonesia? To find out more, let’s see the following explanation.
Provisions for Trademark Registration by Foreigners in Indonesia
Under the Trademark and Geographical Indications Law, applications for trademark registration can be made by foreigners or foreign legal entities domiciled abroad, this means that trademarks owned by foreigners can be registered in Indonesia.
External brands can also be registered even if they do not have a legal entity domiciled in Indonesia.
However, Article 5 paragraph (3) of Law No. 20/2016 (Trademark Law) emphasizes that the application for registration of a trademark in which one or more applicants are foreigners and foreign legal entities domiciled abroad must be submitted through a proxy.
The attorney is an intellectual property consultant who resides or has a permanent domicile in the territory of the Unitary State of the Republic of Indonesia and specifically provides services in the field of filing and managing intellectual property applications. This shows that there is no limitation in terms of the subject/applicant to apply for trademark registration.
How is the Trademark Registration Procedure by Foreigners in Indonesia?
Trademark registration can be done electronically through the website of the DJKI Kemenkumham or non-electronically using the Indonesian language.
The documents and requirements that must be completed to obtain the acceptance date include:
- Two copies of the trademark registration form
- Class and type of goods/services
- Pay registration fees and service fees using IPR consultants
- Examples of labels/brand tags as many as three sheets with a drinking size of 2×2 cm and a maximum of 9×9 cm
- A statement of rights, which is a statement by the applicant that he/she does have the right to apply for registration of the mark and will use the registered mark in the trade of goods/services for which the mark is registered.
- Power of attorney because the application by foreigners or foreign legal entities is carried out by an appointed IPR consultant
Once the minimum requirements are met, the application will get an Acceptance Date. At least 15 days after the Filing Date, the application will be published in the Official Brand Gazette, where the publication period will last for two months.
During the announcement period, the public has the opportunity to file objections if they feel that the trademark cannot be registered or should be rejected.
Within 30 days after the end of the Announcement period, the application will enter the Substantive Examination period where it will be determined whether the applied mark can be registered or not, and must be decided within 150 days of the Substantive Examination period.
If the mark is refused, the Applicant has the right to appeal to the Trademark Appeal Commission. If approved, the DGKI is obliged to issue a Trademark Registration Certificate within 15 days from the date of Trademark Registration.
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That is the explanation of the provisions and procedures for trademark registration for foreigners and foreign legal entities in Indonesia. It can be concluded that to do so, an intellectual property consultant who resides or has permanent domicile in Indonesia is required.
One of the legal consultants that can help with trademark registration is Kontrak Hukum. Together with trusted and officially registered IPR experts, we can assist foreigners and foreign legal entities regarding the trademark registration process in Indonesia smoothly and efficiently.
For service information, please visit
KH Services – PMA Trademark Registration
. If you have any other questions, you can also get a free consultation at
Ask KH
or via direct message (DM) to Instagram @kontrakhukum.
