UU 15 2001 - UU Merek - English - Trademark Law2001_15e

8/15/2019 UU 15 2001 - UU Merek - English - Trademark Law2001_15e

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(Law No. 15/ 2001 dated Augu st 1,2001)

BY THE GRACE OF GOD ALMIGHTY

THE PRESI DENT OF THE REPUBLIC OF INDONESIA,

Considering:

a. that in the global trade era, in line with the ratificationof international conventions by Indonesia, the role of

marks becomes very important, particularly in main

taining the sound business competition;

b. that in relation thereto, marks need adequate regula

tion to provide better service for the public;

c. that based on the considerations in letters a and b as

well as observing experience from the implementation

of the existing mark taw, it is deemed necessary to

replace Law No. 19/ 1992 on mark as already amended

by Law No. 14/ 1997 concerning the amendment to Law

No. 19/ 1992 on mark;

In view of:

1. Article 5 paragraph (1), Article 20 and Article 33 of the

Constitution of 1945;

2. Law No. 7/1994 on the ratification of the Agreement

Establishing the World Trade Organization (Statute Book

of 1994 No. 57, Supplement to Statute Book No. 3564);

With the approval of

THE HOUSE OF REPRESENTATIVES OF

THE REPUBLIC OF INDONESIA

D E C I D E S :

To stipulate :

LAW ON MARK

CHAPTER I

GENERAL PROVISION

Article 1

Referred to in this law as:

1. . lark is a sign in the form of picture, name, word, let

ters, figures, configuration of colors or combination of

the said elements which has distinguishabiiity and is

used in trading activities of goods and services.

2. Trade mark is a mark used in goods traded by some

body or several persons collectively or statutory bodies for distinguishing the goods from other goods of

the same kind.

3. Service mark is a mark used in services traded by some

body or several persons collectively or statutory bo

dies for distinguishing the services from other goods of

the same kind.

4. Collective mark is a mark used in goods and/ or ser

vices of the same characteristics which are traded by

somebody or several persons collectively or statutory

bodies for distinguishing the goods and/or services from

other goods/services of the same kind.

5. Application is a request for the registration of mark

submitted in writing to the Directorate General,

6. Applicant is a party submitting an application.

7. Auditor is a mark examiner, namely an official appointed

by a ministerial decree, and tasked to examine appli

cations for the registration of marks because of his/ her

expertise.

8. Proxy is a consultant of intellectual property rights.

9. Minister is the minister overseeing a department with a

scope of tasks and responsibility covering intellectual

property rights, including mark.

10. Directorate General is the Directorate General of

Intellectual Property Rights subordinate to the depart

ment led by the minister,

11. Date of receipt is the date of receipt of an application

already fulfilling administrative requirements.

12. Consultant of Intellectual Property Rights is somebody

having expertise in the field of intellectual propertyrights and specially providing services in the field of

submission and settlement of applications for patents,

marks, industrial designs as well as other fields of

intellectual property rights and being registered as a

consultant of intellectual property rights at the Direc

torate General.

13. License is a permit granted by a holder of a registered

mark to other parties through an agreement based on

the granting of rights (not the transfer of rights) to use

the mark wholly and partly for goods and/ or services

which are registered in a specified period and under

certain conditions.

14. Priority right is a right of an applicant to submit an

application originating in countries which join the Paris

Convention for the Protection of Industrial Property or

the Agreement Establishing the World Trade Organiza

tion to secure recognition that the date of receipt in

countries of origin constitutes the priority date in the

destination country which is also a member country of

the two agreements, as long as the submission is done

in the period already determined on the basis of the

Paris Convection for the Protection of Industrial Pro

perty,

15. Day is working day.

CHAPTER II

SCOPE OF MARK

Part One

General

Article 2

The mark as stipulated in this law covers trade

and service marks.

Article 3

Right to Mark is an exclusive right granted by the

country to the owner of a mark registered at the Mark

General List for a specified period to use the mark directly

or to permit other parties to use the mark.

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Part Two

Unregi5teredable and rejected mark

Article 4

A mark cannot be registered on the basis of an

application submitted by an applicant with the bad inten

tion.

Article 5

A mark cannot be registered if it contains any ofthe following elements:

a. contravening laws in force, religious morality, decency

or public order;

b. not having distinguishability

c. already becoming public property; or

d. being information on or being connected with goods

and/ or services whose registration is applied for.

Article 6

(1) The Directorate General must reject any application, if

the mark:

a. being the same principally or totally as a mark of

other parties, which has been registered first, in thecase of goods and/ or services of the same kind;

b. being the same principally or totally as a mark

already popularly belonging to other parties, in the

case of goods and/ or services of the same kind;

c. being the same principally or totally as a geographi

cal indication already known.

(2) The provision as meant in paragraph (10 letter b also

can be applied to goods and/ or services of other kinds

as long as they fulfill certain requirements which will

be further stipulated by a government regulation.

(3) The Directorate General also must reject any applica

tion if the mark:

a. being or having resemblance to names of popularfigures, photos or names of statutory bodies owned

by other parties, unless otherwise based on the writ

ten approval of the rightful party;

b. being imitation or having resemblance to names or

acronyms of names, flags, signs or symbols or

emblems of countries or national and international

institutions, unless otherwise based on the written

approval of the authorized party;

c. being imitation or having resemblance to signs or

seals or official stamps used by countries or govern

ment institutions, unless otherwise based on the

written approval of the authorized party.

CHAPTER III

APPLICATION FOR REGISTRATION OF MARK

Part One

Requirements and Procedures for Application

Article 7

(1) Every application is submitted in writing in the Indone

sian language to the Directorate General by mention

ing:

a. month, date, year;

b. full name, citizenship and address of the applicant;

c. full name, and address of proxy, in the case of the

application being submitted through a proxy;

d. colors, if the mark whose registration is applied for

uses color elements;

e. name of country and date of the first request for

mark, in the case of the mark being submitted with

a priority right.

(2) Every application must be signed by the applicant or

his/her proxy.

(3) The applicant as meant in paragraph (2) can consist of

one person or several persons collectively, or a statu

tory body.

(4) The application is accompanied by payment receipt of

costs.

(5) If an application is submitted by more than one person

collectively that have right to the said mark, all names

of the applicants are mentioned by choosing one of the

addresses as their address.

(6) If the application as meant in paragraph (5) , the said

application is signed by one of the applicants entitled

to the mark by attaching the written approval of the

representing applicants.

(7) In the case of the application as meant in paragraph

(5) being submitted through their proxy, the power of

attorney is signed by all parties entitled to the said

mark.

(8) The proxy as meant in paragraph (7) is a consultant of

inte'hctual property rights.

(9) Provisions on requirements for the appointment of a

consultant of intellectual property rights are regulated

by a government regulation, while procedures for the

appointment of the consultant are regulated by a presi

dential decree.

Article 8

(1) Applications for 2 (two) classes of goods or more and/

or services can be submitted in one application.

(2) The application as meant in paragraph (1) must men

tion kinds of goods and/ or services subsumed in classes

whose registration is applied for.

(3) Classes of the goods and/ or services as meant in para

graph (1) are further regulated by a government regu

lation.

Article 9

Provisions on requirements and procedures for the

application are further stipulated by a government regulation.

Article 10

(1) Every application submitted by applicants living or domi

ciled permanently outside the territory of the Republic

of Indonesia must be submitted through their proxies

in Indonesia.

(2) The applicants as meant in paragraph (1) must declare

and chose domiciles of proxies as their legal domiciles

in Indonesia.

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Part Two

Application for Registration of Mark with Priority Right

Article 11

Every application using a priority right must be

submitted not later than 6 (six) months, starting from the

date of receipt of application for the registration of mark

received for the first time in other country, which constitutes a member country of the Paris Convention for the

Protection of Industrial Property or the Agreement Estab

lishing the World Trade Organization.

Article 12

(1) Besides fulfilling the obligations as meant in Part One

of this Chapter, every application using a priority right

must be accompanied by evidence of receipt of appli

cation for the first time, which results in the priority

right.

(2) The evidence of the priority right as meant in para

graph (1) is translated into the Indonesian language.

(3) In the case of the provisions as meant in paragraphs

(1) and (3) being not fulfilled in a period not later than

3 (three) months after the expiration of a right to sub

mit application by using the priority right as meant in

Article 11, the application continues to be processed,

but it uses no priority right.

Part Three

Examination of Completeness of Application for

Registration of Mark

Article 13

(1) The Directorate General examines the completeness of

the requirements for registration of mark as meant in

Articles 7, 8, 9, 10, 11 and 12.

(2) In the case of shortcomings being found in the com

pleteness of the requirements as meant in paragraph

(1), the Directorate Genera! asks for completing the

requirements not later than 2 (two) months as from

the date of dispatch of the request for completing the

requirements.

(3) In the case of the shortcomings dealing with the require

ments as meant in Article 12, the deadline of comple

tion of the requirements is 3 (three) months at the

maximum, starting from the date of expiration of the

period of submission of application using a priority right.

Article 14

(1) In the case of the requirements being not completed inthe period as meant in Article 13 paragraph (2), the

Directorate General notifies the applicant or his/ her

proxy in writing that the application is considered ha

ving withdrawn.

(2) Should the application be considered having withdrawn

as meant in paragraph (1), all costs already paid to the

Directorate General cannot be taken off.

Part Four

Time of receipt of application for registration of mark

Article 15

(1) In the case of the whole administrative requirements

as meant in Articles 7, 8, 9, 10, 11 and 12 being

already fulfilled, the application is given the date of

receipt.

(2)The date of receipt as meant in paragraph (1) is

recorded by the Directorate General.

Part Five

Change in and withdrawal of application forregistration of mark

Article 16

Every application is only allowed co change in name

and/ or address of the applicant or his/her proxy.

Article 17

(1) As long as a decision does net yet obtain from the

Directorate General, applicants or their proxies can with

draw their applications.

(2) In the case of the withdrawal as meant in paragraph

(1) being done by a proxy, it must be done on the basis

of special power of attorney for the need of the with

drawal.

(3) In the case of an application being withdrawn, all costs

already paid to the Directorate General cannot be taken

off.

CHAPTER IV

REGI STRATION OF MARK

Part One

Substantive Examination

Article 18

(1) Not later than 30 ( thirty) days as from the date of

receipt as meant in Article 15, the Directorate General

examines the application substantively.

(2) The substantive examination as meant in paragraph (1)

is done on the basis of the provisions as meant in

Articles 4, S and 6.

(3) The substantive examination as meant in paragraph (1)

is completed not later than 9 (nine) months.

Article 19

(1) The substantive examination is executed by an auditor

at the Directorate General.

(2) Th e auditor is an official who is appointed as and

relieved of a functional official by the Minister on the

basis of certain requirements and qualifications because

of his/her expertise.

(3) The auditor is given a functional career path andallowance, besides other rights in accordance with laws

in force.

Article 20

(1) In the case of an auditor report ing results of the

substantive examination that an application can be

approved for registration, based on the approval of the

Director General, the application is announced in Mark

Gazette.

(2) In the case of an auditor reporting results of the

substantive examination that an application cannot be

registered or is rejected, based on the approval of the

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Director General, the rejection is notified in writing to

the relevant applicant or his/ her proxy by mentioning

reasons for the rejection.

(3) Not later 30 (thirty) days as from the date of receipt of

the application as meant in paragraph (2), the appli

cant or his/ her proxy can raise objection or response

by mentioning reasons.

(4) In the case of the applicant or his/ her proxy not raising

the objection or response as meant in paragraph (3),

the Directorate General stipulates a decision on the

rejection of the said application.

(5) In the case of the applicant or his/ her proxy raising the

objection or response as meant in paragraph (3), and

the auditor reporting that the said response is accept

able, based on the approval of the Dir ecto rate

General, the application is announced in Mark Gazette.

(6) In the case of the applicant or his/ her proxy raising the

objection or response as meant in paragraph (3), and

the auditor reporting that the said response is un

acceptable, based on the approval of the Directorate

General, a decision on the rejection of the said appli

cation is stipulated.

(7) The decision on rejection as meant in paragraphs (4)

and (6) is notified in writing to the relevant applicant

or his/ her proxy by mentioning its reasons.

(8) In the case of an application being rejected, all costs

already paid to the Directorate General cannot be with

drawn.

Part Two

Announcement of Application

Article 21

Not later than 10 (ten) days as from the date of

approval of an application for registration, the Directorate

General announces the application in Mark Gazette.

Article 22

(1) The announcement lasts for 3 (three) months and is

executed by:

a. placing it in Mark Gazette issued periodically by the

Directorate General; and/ or

b. placing it in special means easy and clear for public

view which is provided by the Directorate General.

(2) The Directorate General records the date of commence

ment of announcement of an application in Mark

Gazette.

Article 23

The announcement is done by mentioning:

a. full name and address of the applicant, including proxy

in the case of the application being submitted through

a proxy;

b. class and kind of goods and/ or services whose mark is

requested for registration;

c. date of receipt;

d. name of the country and date of receipt of an applica

tion for the first time, in the case of the application

being submitted by using a priority right; and

e. specimen of mark, including information on color and

in the case of etiquette of mark using foreign language

and/ or letters other than Latin letters and/ or figures

not common in the Indonesian language, along with its

translation into the Indonesian language, Latin letters

or figures common in the Indonesian language, as well

as its pronunciation in Latin spelling.

Part Three

Objection and Rebuttal

Article 24

(1) During the announcement period as meant in Article

22, every party can raise objection in writing for the

said application to the Directorate General with a cost

being charged.

(2) The obj ection as meant in paragraph (1) can be sub

mitted if there is sufficient reasons and proof that the

mark whose registration is applied for is an

unregisteredable and rejected mark on the basis of laws.

(3) In the case of the objection as meant in paragraph (1)

being existent, the Directorate General sends a copy ofletter containing the objection to the relevant appli

cant or his/ her proxy not later than 14 (fourteen) days

as from the date of receipt of the objection.

Article 25

(1) The applicant or his/ her proxy is entitled to deliver a

rebuttal of the objection as meant in Article 24 to the

Directorate General.

(2) The rebuttal as meant in paragraph (1) is submitted in

writing not later than 2 (two) months as from the date

of receipt of the copy of objection conveyed by the

Directorate General.

Part Four

Reexamination

Article 26

(1) In the case of any obj ection and/ or rebuttal , the

Directorate General uses the objection and/ or rebuttal

as consideration material in the reexamination of the

application already announced as meant in Article 21.

(2) The reexamination of the application as meant in para

graph (1) is completed not later than 2 (two) months

as from the date of expiration of the announcement

period.

(3) The Directorate General notifies in writing the result of

the reexamination as meat in paragraphs (1) and (2)

to the party raising the objection.

(4) In the case of the auditor reporting results of the

reexamination that the objection is acceptable, the

Directorate General notifies the applicant in writing that

the application cannot be registered or is rejected, and

in such case, the applicant or his/ her proxy can

appeal.

(5) In the case of the auditor reporting results of the

reexamination that the objection is unacceptable, based

on the approval of the Director General, the applica

tion is declared approved for registration in Mark

Gazette.

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Article 27

(1) In the case of the objection as meant in Article 24 being

not existent, the Directorate General issues and grants

a mark certificate to the applicant or his/her proxy not

later than 30 (thirty) days as from the date of expira

tion of the announcement period.

(2) In the case of the objection as meant in Article 26 para

graph (5) being unacceptable, the Directorate Genera!

issues and grants a mark certificate to the applicant or

his/ her proxy not later than 30 (thirty) days as from

the date of approval of the application for registration

in Mark Gazette.

(3) The mark certificate as meant in paragraph (1) contains:

a. full name and address of the owner of the regis

tered mark;

b. full name and address of the proxy, in the case of

the application being submitted on the basis of the

provision in Article 10;

c. date of submission and date of receipt;

d. name of the country and date of receipt of the appli

cation for the first time, in the case of the applica

tion being submitted by using a priority right;

e. etiquette of the registered mark, including informa

tion on kinds of colors, in the case of the said mark

using mark elements and in the mark using foreign

language and/ or letters other than Latin letters and/

or figures not common in the Indonesian language,

along with its trans lation into the I ndonesian

language, Latin letters or figures common in the

Indonesian language, as well as its pronunciation in

Latin spelling;

f. number and date of registration;

g. the validity period of registration of mark.

(4) Every party can submit an application for obtainingofficial texts of certificates of marks registered in Mark

Gazette by paying a cost.

Part Five

Protection Period of Registered Mark

Article 28

Every registered mark secures legal protection for

a period of 10 (ten) years as from the date of receipt and

the protection period is extendible.

Part Six

Application for Appeal

Article 29

(1) An application for appeal can be filed against the

rejection of an application connected with reasons and

consideration bases on the substantive matters as

meant in Articles 4, 5 and 6.

(2) The application for appeal is submitted in writing by

the relevant applicant or his/her proxy to the Mark

Appeal Commission with a copy made available to the

Directorate General by paying a cost.

(3}The application for appeal is submitted by explaining

the objection completely as well as reasons for the

rejection of the application as a result of the substan

tive examination.

(4) The reasons as meant in paragraph (3} must not be

correction or improvement of the rejectee application.

Article 30

(1) Every application for appeal is submitted not later thar.

3 (three) months as from the date of notification of

rejection of the application.

(2) In the case of the period as meant in paragraph (1)

already elapsing without the application for appeal, the

application is considered accepting the rejection of the

application.

(3) In the case of the application being already considered

acceptable as meant in paragraph (2), the Directorate

Genera! records and announces the rejec: :on.

Article 31

(1) The Mark Appeal Commission makes a decision not later

than 3 (three) months as from the date of receipt of ar

app'ication for appeal.

(2) In the case of the Mark Appeal Commission ruling in

favor of the application for appeal, the Directorate

General executes the announcement as meant in

Article 21, except the application already announced in

Mark Gazette.

(3) In the case of the Mark Appeal Commission rejecting

the application for appeal, the applicant or his/ her proxy

can file a lawsuit against the decision on the rejection

of the application for appeal to the Court of Commerce

not later than 3 (three) months as from the date of

receipt of the decision on the rej ection.

(4) Only appeal for the Supreme Court can be filed against

the decision of the Court of Commerce as meant in

paragraph (3).

Article 32

Procedures for the application, examination and

settlement of appeal are further stipulated by a presiden

tial decree.

Part Seven

Mark Appeal Commission

Article 33

(1) The Mark Appeal Commission is a special agency which

is independent and belongs to the department in charge

of intellectual property rights.

(2) The Mark Appeal Commission consists of a chairman

concurrently member, vice chairman concurrently member and members composed of several experts in

needed fields, as well as senior auditors.

(3) The members of the Mark Appeal Commission as meant

in paragraph (I) are appointed and relieved by the Min

ister for the tenure of 3 (three) years.

(4) The chairman and vice chairman are elected from and

by members of the Mark Appeal Commission.

(5) In order to examine an application for appeal, the Mark

Appeal Commission establishes a council with the num

ber of members being odd, at least 3 (three) persons,

and out of them, one is senior auditor not examining

the application substantively.

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Article 34

The organizational structure, tasks and functions

of the Appeal Mark Commission are further stipulated by a

government regulation.

Part Eight

Extension of Protection Period of Registered Mark

Article 35( 1) Every owner of mark can submit an application for the

extension for the same period any time.

(2) The application for the extension as meant in para

graph (1) is submitted in writing by the owner of mark

or his/ her proxy not later than 12 (twelve) months

before the expiration of the protection period of the

registered mark.

(3) The application for the extension as meant in para

graph (2) is submitted to the Directorate General.

Article 36

An application for the extension is approved if:

the relevant mark is still used in the goods or servicesas meant in the said certificate of mark; and

b. the goods or services as meant in letter a are still pro

duced and traded.

Article 37

(1) The Directorate General rejects an application for the

extension if the said application fails to comply with

the provisions as meant in Articles 35 and 36.

(2) The Directorate General rejects an application for the

extension, if the said mark has resemblance principally

or totally to a popular mark belonging to other parties,

by observing the provisions as meant in Article 6 para

graph (1) letter b and paragraph (2).(3) The rejection of application for the extension is noti

fied in writing to the owner of the mark or his/her proxy

by mentioning reasons for the rejection,

(4) A rebuttal of rejection of application for the extension

as meant in paragraphs (1) and (2) can be filed to the

Court of Commerce.

'5)Only appeal for the Supreme Court can be filed against


paragraph (3).

Article 38

(1) The extension of the protection period of a registered

mark is recorded in the Mark General List and announcedin Mark Gazette.

(2) The extension of the protection period of a registered

mark is notified in writing to the owner of the mark or

his/her proxy.

Part Nine

Change in Name and/or Address of

Owner of A Registered Mark

Article 39

(1) Every application for recording the change in name and/

or address of owner of a registered mark is submitted

Business News 6661-6662/12-9- 2001

to the Directorate General by paying a cost of record

ing in the Mark General List and accompanied a legiti

mate copy of evidence of the change.

(2) The change in name and/ or address of the owner of a

registered mark already recorded by the Directorate

General is announced in Mark Gazette.

CHAPTER VTHE TRANSFER OF RIGHT TO REG ISTE RED MARK

Part One

The transfer of right

Article 40

(1) The right to a registered mark can shift or be trans

ferred due to:

a. inheritance;

b. t .-stament;

c. grant;

d. agreement; or

e. other causes justified by laws.

(2) The transfer of right to the mark as meant in para

graph (1) must have its recording requested to theDirectorate General for being recorded in the Mark

General List.

(3) The application for the transfer of right to the mark as

meant in paragraph (1) is accompanied by supporting

documents.

(4) The transfer of right to the mark already recorded as

meant in paragraph (2) is announced in Mark Gazette.

(5) The transfer of right to a registered mark which is not

recorded in the Mark General List brings about no legal

consequence to the third party.

(6) The recording of transfer of right to the mark as meant

in paragraph (1) is subjected to the cost as stipulated

in this law.

Article 41

(1) The transfer of r ight to a registered mark can be

accompanied by the transfer of good name, reputation

or others connected with the mark.

(2) The right to a registered service mark inseparable from

the personal capability, quality and skill of the provider

of the relevant service can be transferred with the pro

vision that the guarantee for the quality of service pro

vided must be existent.

Article 42

The Directorate General only can records the trans

fer of right to a registered mark if it is accompanied by a

written statement of the recipient of the transfer that the

mark will be used for the trade of goods and/ or services.

Part Two

License

Article 43

( l) The owner of a registered mark has a right to give a

license to other parties by an agreement that the

licensee will use the mark for goods or services wholly

or partly.

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(2) The licensing agreement is effective throughout the

territory of the Republic of Indonesia, unless other

wise agreed, for a period not longer than the protec

tion period of the relevant registered mark.

(3) The licensing agreement must have its recording

requested to the Directorate General by paying a cost

and legal consequences of the recording of the licens

ing agreement apply to the relevant parties and thethird party.

(4) The Directorate General records the licensing agree

ment as meant in paragraph (3) in the Mark General

List and announces its Mark Gazette.

Article 44

The owner of a registered mark already granting

a license to the other party as meant in Article 43 para

graph (1) can continue to exercise directly or give a

license to the other third party to use the right, unless

otherwise agreed.

Article 45

The statement that the licensee can further give a

license to the third party can be stipulated.

Article 46

The use of the registered mark in Indonesia by

the licensee is considered the same as the use of the mark

in Indonesia by the owner of the mark.

Article 47

(1) A licensing agreement is prohibited from containing

provisions directly and indirectly capable of causing

harmful effects to the Indonesian economy or contain

ing limitations discouraging the capability of I ndonesian people in mastering and developing technology in

general.

(2) The Directorate General must reject every application

for the recording of licensing agreements containing

the prohibitions as meant in paragraph (1) .

(3) The Directorate General notifies in writing the rejec

tion along with its reasons as meant in paragraph (2)

to the owner of mark or his/ her proxy, and the

licensee.

Article 48

(1) In the case of a licensee having good intention, but the

mark is later revoked on the basis of the principal ortotal resemblance to other registered marks, the

licensee continues to have a right to implement the

licensing agreement up to the expiration of the period

of the licensing agreement.

(2) The licensee as meant in paragraph (1) is no longer

obliged to continue the payment of royalty to the

revoked licenser, but the licensee must pay royalty to

the owner of the mark which is not nullified.

(3) In the case of a licenser already receiving royalty in a

lump sump from a licensee previously, the said licenser

must give up the portion of royalty received to the owner

Business News 6661-6662/12-9-2001

of mark which is not nullified, with the amount being

equal to the remaining period of the licensing agree

ment.

Article 49

Requirements and procedures for the application

for recording a licensing agreement and provisions on the

licensing agreement as meant in this law are further stipu

lated by a presidential decree.

CHAPTER VI

COLLECTIVE MARK

Article 50

(1) Every application for the registration of trade or ser

vice marks as a collective mark can be accepted if the

application clearly certifies that the marks will be used

a collective mark.

(2) Besides the affirmation on the use of collective mark

as meant in paragraph (1), the application must be

accompanied by copies of provisions on the use of the

marks as a collective mark, which are signed by all

owners of the relevant marks.

(3) The provisions on the use of the collective mark as

meant in paragraph (1) at least contain:

a. nature, general characteristics or quality of goods

or services produced and traded;

b. regulation for owner s of the col lective mark to

supervise effectively the use of the mark; and

c. sanction against the violation of regulation on the

use of the collective mark.

(4) The provisions as meant in paragraph (3) are recorded

in the Mark General List and announced in Mark

Gazette.

Article 51

Every application for the registration of a collec

tive mark is subjected to the examination of completeness

of the requirements as meant in Articles 7, 8, 9, 10, 11, 12

and 50.

Article 52

The substantive examination of an application for

a collective mark is done in accordance with the provi

sions in Articles 18, 19 and 20.

Article 53

(1) Any change in the provision on the use of a collective

mark must have its recording requested to the Direc

torate General by accompanying a legitimate copy of

evidence of the change.

(2) The change as meant in paragraph (1) is recorded in

the Mark General List and announced in Mark Gazette.

(3) The change in the provision on the use of a collective

mark is effective for the third party after being recorded

in the Mark General List.

Article 54

( l) The right to a collective mark only can be transferred

to a


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b. the mark is used for goods and/ or services not suit

able to goods and/ or services whose registration is

applied for, including the use of a mark not suitable

to the registered mark.

(3) The reasons as meant in paragraph (2) letter a are due

to:

a. import prohibition;

b. prohibition connected with a license to distribute

goods which use the relevant mark or a provisional

decision from the authorized party;

c. other similar prohibition stipulated by a government

regulation.

(4) The erasing of registration of the mark as meant in

paragraph (2) is recorded in the Mark General List and

announced in Mark Gazette.

(5) Any objection against the decision on the erasing of

registration of a mark as meant in paragraph (2) can

be submitted to the Court of Commerce.

Article 62

'.) Every application for erasing the registration of a mark

of goods and/ or services partly or wholly by the owner

of the mark is submitted to the Directorate General.

(2) In the case of the mark as meant in paragraph (1) being

still committed to a licensing agreement, the erasing

only can be done if the matter is approved in writing by

the licensee.

(3) The exception from the approval as meant in paragraph

(1) is only possible if in the licensing agreement, the

licensee firmly agrees to put aside the agreement.

(4) The erasing of registration of the mark as meant in

paragraph (1) is recorded in the Mark General List and

announced in Mark Gazette.

Article 63

The erasing of registration of a mark on the basis

of the reasons as meant in Article 61 letters a and b also

can be submitted by the third party in the form of a litiga

tion to the Court of Commerce.

Article 64

(1) Only appeal to the Supreme Court can be filed against


Article 63.

(2) The content of the decision of the judicial institution as

meant in paragraph (1) is promptly conveyed by the

secretary of the relevant court to the DirectorateGeneral after the date when the decision is made.

(3) The Directorate General erases the relevant mark from

the Mark General List and announces it in Mark Gazette

if the decision of the judicial institution as meant in

paragraph (1) has been accepted and had permanent

legal power.

Article 65

( l) The Directorate General erases the registration of a

mark by delisting the relevant mark from the Mark

General List and putting a note about the reason for

and date of the erasing.

(2) The erasing of the registration as meant in paragraph

(1) is notified in writing to the owner of the mark or

his/ her proxy by mentioning the reason for the erasing

and affirming that certificate of the relevant mark is

declared ineffective anymore as from the date of

delisting from the Mark General List.

(3) The erasing of registration of a mark causes the termi

nation of legal protection of the relevant mark.

Article 66

(1) The Directorate General can erase the registration of a

collective mark on the basis of:

a. the application of the owner of a collective mark

with the written approval of all users of the collec

tive mark;

b. sufficient evidence that the collective mark is not

used for 3 (three) years consecutively as from the

date of registration or the last use, unless there are

reasons acceptable by the Directorate General.

c. sufficient evidence that the collective mark is used

for goods or services not suitable to the goods or

services whose application is requested for;

d. sufficient evidence that the collective mark is not

used in accordance with the regulation on the use of

a collective mark.

(2) The application for erasing the registration of a collec

tive mark as meant in paragraph (1) letter a is submit

ted to the Directorate General.

(3) The erasing of registration of the collective mark as

meant in paragraph (2) is registered in the Mark

General List and announced in Mark Gazette.

Article 67

The erasing of registration of a collective mark

also can be filed by the third party in the form of a lawsuit

to the Court of Commerce on the basis of the reasons as

meant in Article 66 paragraph (1) letter b, c or d.

Part Two

Annulment

Article 68

(1) A lawsuit for nullifying the registration of a mark can

be filed by the interesting party on the basis of the

reason as meant in Article 4, 5 or 6.

(2) Owners of unregistered marks can filed the lawsuit as

meant in paragraph (1) after submitting applications

to the Directorate General.

(3) The lawsuit for the annulment as meant in paragraph

(1) is submitted to the Court of Commerce.

(4) In the case of the plaintiff and defendant being domi

ciled outside the territory of the Republic of Indonesia,

the lawsuit can be submitted to the Court of Commerce

in J akarta.

Article 69

(1) A lawsuit fcr nullifying a mark only can be submitted in

a period of 5 (five) years as from the date of registra

tion of the mark.

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(2) A lawsuit for nullifying can be submitted without dead

line, if the mark contravenes religious morality, decency

or public order.

Article 70

(1) Only appeal to the Supreme Court can be field against

a verdict of the Court of Commerce deciding a lawsuit

for nullifying.

(2) The content of the verdict of the judicial institution as

meant in paragraph (1) is promptly conveyed by the

relevant secretary of the court to the Directorate

General after the date when the decision is made.

(3) The Directorate General nullifies the registration of the

relevant mark at the Mark General List and announces

it in Mark Gazette after the decision of the judicial

institution as meant in paragraph (1) is received and

has permanent legal power.

Article 71

\ )The Directorate General nullifies the registration of a

mark by delisting the mark from the Mark General List

and putting a note about the reasons and the date of

annullment.

(2) The annullment of the registration as meant in para

graph (1) is notified in writing to the owner of the mark

or his/ her proxy by mentioning reasons for the

annullment and affirming that certificate of the relevant

mark is declared ineffective anymore as from the date

of delisting from the Mark General List.

(3) The delisting of registration of a mark from the Mark

General List as meant in paragraph (1) is announced in

Mark Gazette.

(4) The annullment and delisting of registration of a markcauses the termination of legal protection for the

relevant mark.

Article 72

In addition to the reason for the annullment as

meant in Article 68 paragraph (1), the annullment of a

^gistered collective mark also can be requested to the

_ ourt of the Commerce if the use of the collective mark

contravenes the provision as meant in Article 50 paragraph

CD-

CHAPTER IX

ADMINI STRATI ON OF MARK

Article 73

The administration of mark as stipulated in.this

law is executed by the Directorate General.

Article 74

The Directorate General operates a national mark

information and documentation network system capable

of providing information on mark to the public.

CHAPTER X

C O S T

Article 75

( l)The submission of every application or application for

the extension of mark, application for obtaining a copy

of the Mark General List, the recording of transfer of

right, the change in name and/ or address of a holder

of a registered mark, the recording of a licensing agree-

meiit, objection against an application, application for

appeal as well as others determined in this law is sub

jected to a cost whose amount is stipulated by a

government regulation.

(2) Further provisions on the requirements, period and

procedures for the payment as meant in paragraph (1)

are stipulated by a presidential decree.

(3) The Directorate General, based on the approval of the

Minister and the Minister of Finance, can use revenue

coming from the cost as meant in paragraphs (1) and

(2) on the basis of laws in force.

CHAPTER XI

SETTLEMENT OF DI SPUTE

Part One

Lawsuit Against Mark Violation

Article 76

(1) The owner of a registered mark can file a lawsuit against

every party that without right uses a mark having

resemblance principally or totally for goods or services

of the same kind in the form of:

a. lawsuit for compensation; and/ or

b. termination of all activities connected with the use

c»" the said mark.

(2) The lawsuit as meant in paragraph (1) is submitted to

the Court of Commerce.

Article 77The lawsuit against the mark violation as meant

in Article 76 can be submitted by a licensee of a registered

mark individually and together with the owner of the

relevant mark.

Article 78

{l )When the examination is underway and in order to pre

vent the occurrence of a bigger loss, based on a

request of the holder of a mark or licensee as a plain

tiff, the law can order the defendant to stop producing,

distributing and/ or trading goods or services using the

mark without right.

(2) In the case of the defendant being also demanded togive up goods which use the mark without right, the

judge can order that the delivery of goods or value of

the good is done after the decision of the court has

permanent legal power.

Article 79

Only appeal to the Supreme Court can be filed

against the decision of the Court of Commerce.

Part Two ( To be continued )

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M A R K

(Law No. 15/ 2001 dated Aug ust 1,2001)

/ Con t in ued f r om Bu si nes s New s No. 6661 - 6662 pages 9A - ISA J

Part Two

Procedure for litigating in the Court of Commerce

Article 80(1) A lawsuit for nullifying the registration of a mark is

submitted to the Chairman of the Court of Commerce

in jurisdiction of address or domicile of the defendant.

(2) In the case of the defendant being domiciled outside

the territory of Indonesia, the lawsuit is submitted to

the Chairman of Central Jakarta Court of Commerce.

(3) The secretary of the court registers the lawsuit for the

annullment on the date of submission of the relevant

lawsuit and gives a written evidence of receipt signed

by the secretary to the plaintiff with the same date as

the date of registration of the lawsuit.

(4) The secretary conveys the lawsuit for the annullment

to the Chairman of the Court of Commerce not later

than 2 (two) days as from the date of registration of

the lawsuit.

(5) Not later than 3 (three) days as from the date of

registration of the lawsuit for the annullment, the Court

of Commerce studies the lawsuit and stipulates the

date of legal proceedings.

(6) The legal proceedings for the lawsuit for the annul

ment are executed not later than 60 (sixty) days after

the registration of the lawsuit.

(7) The bailiff summons parties not later than 7 (seven)

days after the registration of the lawsuit for the

annullment.

(8) A decision on the lawsuit for the annulment must be

read out not later than 90 (ninety) days after the reg

istration of the lawsuit and the period can be extended

to another term of 30 (thirty) days at the maximum

on the basis of the approval of the Chairman of the

Supreme Court.

(9) The decision on the lawsuit for the annulment as meant

in paragraph (8) which completely contains legal con

siderations being the basis for the said decision must

be read out in legal proceedings open for the public

and can be executed first, even though a legal action

is filed against the decision.

(10) The bailiff must convey content of the decision of the

Court of Commerce as meant in paragraph (9) to par

ties not later than 14 (fourten) days after the decision

on the lawsuit for the annullment is read out.

Article 81

The procedure for litigating as regulated in Article

80 is effective mutatis mutandis for the lawsuit as stipu

lated in Article 76.

Part Three

Appeal to the Supreme Court

Article 82

Only appeal can be filed against the decision of

the Court of Commerce as meant in Article 80 paragraph

(8).

Article 83

(1) Every application for the appeal as meant in Article 82

must be submitted not later than 14 (fourteen) days

after the date of the decision against which appeal is

requested is read out or notified to parties by means

of registering it to the secretary of the court already

deciding the lawsuit.

(2) The secretary of the court registers the appeal for the

Supreme Court on the date of submission of the re

levant application and a written receipt signed by the

secretary of the court with the date being the same as

that of receipt of registration is given to the applicant

of the appeal.

(3) The applicant of appeal to the Supreme Court must

have conveyed an appeal memory to the secretary of

the court in 7 (seven) days as from the date of regis

tration of the application for the appeal as meant in

paragraph (1).

(4) The secretary of the court is obliged to send the

application for the appeal and the appeal memory as

meant in paragraph (3) to the defendant in the

appeal not later than 2 (two) days after the date of

registration of the appeal.

(5) The defendant can file contra-appeal memory to the

secretary of the court not later than 7 (seven) days

after the date of receipt the appeal memory as meant

in paragraph (4) by the relevant defendant and the

secretary of the court is obliged to convey the contra-appeal memory to the applicant of the appeal not later

than 2 (two) days after the secretary of the court re

ceives the contra-appeal memory.

(6) The secretary of the court is obliged to documents of

the relevant appeal to the Supreme Court not later

than 7 (seven) days after the period as meant in para

graph (5) elapses.

(7) The Supreme Court must study the documents of the

appeal as meant in paragraph (6) and stipulate the

date of legal proceedings not later than 2 (two) days

after the application for the appeal is received by the

Supreme Court.

(8) Legal proceedings for examining the application for

the appeai must be done not later than 60 (sixty) days

after the date of receipt of the application by the

Supreme Court.

(9) A decision on the application for the appeal must be

read out not later than 90 (ninety) days as from the

date of receipt of the application by the Supreme Court.

(10) The decision on the application for the appeal as meant

in paragraph (9) completely containing legal conside

rations which become the basis for the said decision

must be read out in legal proceedings open for the

public.

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(11) The secretary of the Supreme Court is obliged to con

vey the content of the decision on the appeal to the

secretary of the court not later than 3 (three) days

after the decision on the application for the appeal is

read out.

(12) Bailiff must convey the content of the decision on theappeal as meant in paragraph (I ) to the plaintiff and

defendant of the appeal not later than 2 (two) days

after the decision is received.

Part Four

Alternative for Settlement of Dispute

Article 64

In addition to the settlement of the lawsuit as

meant in Part One of this Chapter, parties can settle dis

putes through arbitration or alternative for the settlement

of disputes.

CHAPTER XII

PROVIS IONAL STIPULATION OF THE COURT

Article 85

Based on sufficient evidence, every party whose

right is inflicted can ask the judges of the Court of Com

merce to issue a provisional stipulation on:

a. the prevention of goods connected with the violation

against mark rights from coming in.

b. the storage of evidence connected with violation against

the rights.

Article 86

(1) Every application for the provisional stipulation is sub

mitted in writing to the Court of Commerce with the

requirements as follow:

a. attaching evidence of right ownership;

b. attaching evidence of strong initial indications of vio

lation against mark;

c. clear information on goods and/or documents asked,

sought, gathered and collected for proving;

d. having fears that parties allegedly violating mark will

be able easily to make the evidence disappear;

e. paying guarantee in form of cash money or bank

guarantee.

(2) In the case of the provisional stipulation as meant inArticle 85 being already executed, the Court of Com

merce promptly notifies parties subjected to actions

and open opportunity for the parties to have their

information heard.

Article 67

In the case of the judge of the Court of Com

merce already issuing a provisional stipulation, the judge

of the Court of Commerce examining the dispute must

decide to amend, revoke or fortify the stipulation as meant

in Article 85 not later than 30 (thirty) days as from the

date of issuance of the stipulation.

Article 88

If the provisional stipulation is:

a. fo r t i f i ed , the g u a r a n t e e money a l r eady pa id mus t be

r e t u r n e d to the app l i can t of th e s t i pu la t i on and the sair.

app l i can t can f i le t he l a w s u i t as m e a n t in Article 76;

b . r e v o k e d , t h e g u a r a n t e e m o n e y a l r e a d > p a i d m u s 'p rom pt l y g i ven up to the pa r ty sub j ec ted to th e ac t ion

as a compensation for the provisional stipulation.

CHAPTER XIII

INVESTIGATION

Article 89

(1) In addition to the investigators of the Indonesian Po

lice Force, certain civil servant officials at the Direc

torate General are given special authority to act as the

investigators as meant in Law No. 8/1981 on Civil Code,

to investigate crimes in the mark field.

(2) The civil servant investigators as meant in paragraph

(1) are authorized to:

a. examine the truth of lawsuits connected crimes in

the mark field;

b. investigate persons or statutory bodies allegedly

committing crimes in the mark, field on the basis of

the lawsuits as meant in letter a;

c. ask information and evidence from persons or statu

tory bodies in connection with crimes in the mark

field;

d. audit the bookkeeping, records and other documents

connected with crimes in the mark field;

e. undertake examination in certain places allegedl>

containing evidence, bookkeeping, records and other

documents as well as confiscating materials anc

products of the violation which can be used as evi

dence in a criminal case in the mark field; and

f. ask assistance from experts in the framework of

execution of tasks of investigation into crimes in the

mark field;

(3) The civil servant investigators as meant in paragraph

(1) notify the commencement of investigation anc

results of their investigation to investigators of the

Indonesian Police Force.

(4) The civil servant investigators as meant in paragrapl

(1) convey results of their investigation to Public Pro

secutors through investigators of the Indonesian Polict

Force by observing the provision in Article 10 of Lav

No. 8/1981 on Criminal Code.

CHAPTER XIV

CRIMINAL PROVISION

Article 90

Whoever intentionally and unrightfully uses a marl

totally the same as a registered mark belonging to th.

other party for goods and/ or services of the same kirn

which are produced and/ or traded is sentenced to impris

onment of 5 (five) years at the maximum and/or a fine c

Rp 1,000,000,000.00 (one billion rupiah) at the maximum

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Article 91

Whoever intentionally and unrightfully uses a mark

principally the same as a registered mark belonging to the

other party for goods and/ or services of the same kind

which are produced and/ or traded is sentenced to impri

sonment of 4 (five) years at the maximum and/ or a fine of

Rp 800,000,000.00 (eight hundred million) at the maxi

mum.

Article 92

(1) Whoever intentionally and unrightfully uses a mark

totally the same as a geographical indication belong

ing to the other party for goods and/ or services of the

same kind which are produced and/ or traded is sen

tenced to imprisonment of 5 (five) years at the maxi

mum and/or a fine of Rp 1,000,000,000.00 (one billion

rupiah) at the maximum.

(2) Whoever intentionally and unrightfully uses a mark

principal ly the same as a geographical indication

belonging to the other party for goods and/ or services

of the same kind which are produced and/ or traded is

sentenced to imprisonment.of 4 (five) years at the

maximum and/ or a fine of Rp 800,000,000.00 (eight

hundred million) at the maximum.

(3) The provisions as meant in paragraphs (1) and (2) are

applied to the attachment of actual origin to products

resulting from a violation or the attachment of words

showing that the said products constitute imitation of

a registered and protected mark on the basis of geo

graphical indications.

Article 93Whoever intentionally and unrightfully uses a pro

tected mark on the basis of indications of origin in goods

or services thus having capable of deceiving or misleading

the public about the origin of the goods or services is sen

tenced to imprisonment of 4 (four) years at the maximum

and/ or Rp 800,000,000.00 (eight hundred million) at the

laximum.

Article 94

(1) Whoever trading goods and/ or services ascertained or

noteworthy to ascertain that the said goods and/ or ser

vices result from the violations as meant in Articles 90,

91 and 93 is sentenced to imprisonment of one year atthe maximum and/ cr a fine of Rp 200,CC ? #000.00 (two

hundred million) at the maximum.

(2) Thc crime as meant in paragraph (1) is a violation.

Article 95

The crimes as meant in Articles 90, 91, 92, 93

and 94 constitute actions liable to litigate.

CHAPTER XV

TRANSI TI ONAL PROVISION

Article 96

(1) Every applicat ion for the extension of protection

period of a registered mark, the recording of transfer

of a right, the recording of change in name and/ or

address, request for delisting or annulment of regis

tration of a mark submitted on the basis of Law No.

19/ 1992 as already amended by Law No. 14/ 1997 on

mark but the application is not yet completed upon

the date of enforcement of this law is settled on thebasis of the provisions in the said law.

(2) All marks already registered on the basis of Law No.

19/ 1992 as meant in Law No. 14/ 199-7 on mark and

still valid upon the promulgat ion of this law are

declared to remain valid according to this law for the

remainder of their respective registration periods.

Article 97

Lawsuits for the annulment of the marks as meant

in Article 96 paragraph (2) can continue to be submitted

to the Court of Commerce as meant in Article 68, on the

basis of the reasons as meant in Articles 4, 5 and 6.

Article 98

Disputes over marks which are still processed in

the court upon the enforcement of this law continue to be

processed on the basis of Law No. 19/ 1992 as already

amended by Law No. 14/ 1997 on mark until they obtain

decisions having permanent legal power.

Article 99

All technical directives made on the basis of Law

No. 19/1992 as already amended by Law No. 14/1997 on

mark which have existed upon the enforcement of this law

are declared to remain effective as long as they do not

contravene this law or are not yet replaced by new regula

tions on the basis of this law.

CHAPTER XVI

CONCLUSION

Article 100

With the enforcement of this law, Law No. 19/

1992 as already amended by Law No. 14/ 1997 on mark is

declared null and void.

Article 101

This law comes into force as from the date of pro

mulgation.

For public cognizance", this law shall be promul

gated by placing it in Statute Book of the Republic of

Indonesia.

Ratified in Jakarta

On August 1,2001

THE PRESI DENT OF THE REPUBLIC OF I NDONESIA

sgd

MEGAWATI SOEKARNOPUTRI

Business News 6664-6665/19-9-2001 Promulgated


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Promulgated in J akarta

On August 1,2001

THE SECRETARY OF STATE

sgd

MUHAMMAD M. BASYUNI

STATUTE BOOK OF

THE REPUBLIC OF INDONESI A OF 2001 NO. 110

ELUCIDATION

O N

LAW NO. 15/2001

CONCERNING

M A R K

I. GENERAL

The widespread globalization in both social, eco

nomic, cultural and other life sectors is a development

which is actual and seizes thorough attention in the last

decade as well as a trend which stifl continues in the future. Developments of technology, information and trans

portation have caused trading activities to grow rapidly

and even positioned the world as the collective sole mar

ket.

The global trade era only can be maintained if a

climate of fair business competition is existent. In this case,

marks play a very important role, requiring a more

adequate regulation system. Based on the said develop

ments and in line with international agreements already

ratified by Indonesia as well as experiences from execut

ing the mark administration, the mark law, namely Law

No. 19/1992 (Statute Book of 1992 No. 81) as already

amended by Law No. 14/ 1997 (Statute Book of 1997 No.

37) hereinafter called the o ld mark law needs to be

improved by a new mark law.

Compared to the old mark law, contrast differ

ences in this law deal with, among others, the settlement

of an application. Pursuant to this law, substantive exami

nation is executed after the applications fulfill administra

tive requirements. Previously, the substantive examination

is executed after the completion of announcement of marks.

The amendment is intended to enable parties faster to

ascertain whether the application is accepted or rejected,

and open opportunity for other parties to raise objections

against applications already approved for registration.

Under the new law, the announcement period is 3 (three)

months, shorter than that in the old law. As a result of the

cutting of the announcement period, the settlement pe

riod of an application will be shorter totally in the frame

work of enhancing service for the public.

In connection with a priority right, this law stipu

lates that in the case of an application failing to meet evi

dence of receipt of an application resulting in the priority

right for the first time in 3 (three) months after the expi

ration of the priority right, the said application will be

treated as an ordinary application without the priority right.

Another matter deals with the rejection of an

application being the loss of an application. For that pur

pose, it needs regulation capable of helping the applicant

to ascertain reasons for the rejection of his/ her applica

tion more clearly by first notifying the applicant that the

application will be turned down.

In addition to the protection of trade and service

marks, this law also regulates the protection of a geographical indication, namely a sign showing the region of

origin of a product because of geographical factors, in

cluding natural or human factor or combination thereof,

giving certain characteristics and quality to the produc

tion. Moreover, it also regulates an indication of origin.

Subsequently, in the view of the fact that a mark

constitutes part of economic/ business activities, the settle

ment of a dispute over a mark needs a special j udicial

institution, namely the Court of Commerce so that the dis

pute over the mark can be settled in a relatively fast

period. In relation thereto, special law must also regu

lated to settle disputes over mark, including intellectual

property rights. The special court for the settlement ofdisputes over mark and intellectual property rights is also

known in other countries, such as Thailand. In this law,

the owner of a mark is also given iegal protection efforts,

such as prov is ional st ipulat ion to prevent his/ her mark from

suffering a bigger loss. In addition, this also contain pro

visions on arbitration and alternative for the settlement of

disputes to provide wider opportunity in the settlement of

the disputes.

This law results in the regulation on mark in a

single text so as to better facilitate the public to use it. In

this case, provisions in the old law whose substances are

not changed, are contained again in this law.

II. ARTICLE BY ARTICLE

Articles 1 and 1

Sufficiently clear

Article 3

Unless otherwise stipulated firmly, what is meant

by parties in this article and subsequent articles in this law

is someone , severa l persons co l l ect i ve l y or s ta tu to ry

bod ies .

Article 4

An applicant having good intention is an applica

tion registering his/her mark properly and honestly without having any intention to get ride on, copy or crib the

popularity of a mark belonging another party in the inter

est of his/ her business that inflicts a loss on the other

party or causes unfair business competition, carelessness

or misleading to consumers. For example, trade mark A

already known generally by the public for years is cribbed

in such a way so as to have resemblance to the trade mark

A principally or totally. Since the imitator has committed

the bad intention in the example, elen.ents of his/ her

intention in copying the already known traJ e mark at least

are noteworthy to ascertain.

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Article 5

Letter a

The use of a mark capable of hurting the feeling,

polite behavior, orderliness and religiosity of public or cer

tain groups of the society is included into the definition

contravening religious morality, decency or public order.

Letter b

A mark is considered not having distinguishability

if the mark is too simple, such as being line mark or spot

mark, or too complicated so as to be unclear.

Letter c

An example of the mark is the mark of skull above

two crossing bones, which have been publicly known as

the danger mark. Such a mark is a mark being general in

the nature and already belonging to the public property.

In relation thereto, the sign cannot be used as a mark.

Letter d

The mark connects with or only mentions goods

or services whose registration is requested, e.g. mark of

coffee or coffee picture for coffee or coffee products.

.rticle 6

Paragraph (1)

Letter a

What is meant by s imi la r i ty in pr inc ip le is the

resemblance caused by significant elements between a

mark and other mark, which can result in the impression

of similarity in both form, placement method, writing way

or combination of elements and similarity of pronuncia

tion contained in the mark.

Letter b

The rejection of an application having similarity

principally and wholly to a popular mark for goods and/ or

services of the same kind is done by observing the public

knowledge about the mark in the relevant business field.

In addition, reputation of the popular mark acquired due

to intensive and massive promotion, investments in coun

tries which are executed by the owner and accompanied

by evidence of registration of the mark in countries also

needs to be observed. In the case of the above mentioned

matters being considered not sufficient yet, the Court of

Tommerce can instruct an independent institution to carry

out a survey for making a conclusion whether the mark

becoming the basis for the rejection is popular or not.

Letter c

Sufficiently clear

Paragraph (2)

Sufficiently clear

Paragraph (3)

Letter a

Name o f s ta tu to r y body means the name of the

statutory body used as a mark and registered at the Mark

General List.

Letter b

Nat iona l ins t i tu t i ons includes mass organizations

and social political organizations.

Letter c

Sufficiently clear

Article 7

Sufficiently clear

Article S

Paragraph (1)

In principle, an application can be submitter "ror

m ora than one class of goods and/ or services in accor

dance w i th provisions of Trade Mark Treaty already rati

fied by Presidential Decree No. 17/ 1997.

It a i m s at facilitating the mark owner planning to

use his/her mark for several goods and/ or services of seve

ral classes which are not necessary to get occupied by

administrative procedures requiring the separate regula

tion on an application for every class of the goods and/ or

services.

Paragraphs (2) and (3)

Sufficiently clear

Article 9

Sufficiently clear

Article 10

Paragraph (1)

This provision also applies to applications using a

priority right.

Paragraph (2)

Sufficiently clear

Article 11

This provision aims at accommodating the state

interest being a member of the Paris Convention for the

Protection of Industrial Property 1883 (as already amended

several times) or the Agreement Establishing the World

Trade Organization.

Article 12

Paragraph (1)

The evidence of a priority right is in the form of

application for registration along evidence of receipt of

the application also providing affirmation on the date of

receipt of the application. If what is conveyed is in the

form of copy or photocopy of the receipt, the endorse

ment of the copy or photocopy of the receipt is granted by

the Directorate General in the case of the application is

submitted for the first time.

Paragraph (2)

Translation is done by a sworn in translator.

Paragraph (3)

Sufficiently clear

Article 13

Paragraph (1)

Sufficiently clear

Paragraph (2)

Date o f d ispa tch means the date of dispatch on

the basis of postal stamp.

Paragraph (3)

Sufficiently clear



16/18


17/18

22A

Paragraph (4)

Sufficiently clear -

Paragraph (5)

The stipulation that the legal consequences are

just effective after the transfer of right to the mark is

recorded in the Mark Genera! List is intended to facilitate

supervision and realize legal certainty.

Article 41

Paragraph (L)

Sufficiently clear

Paragraph (2)

The transfer of right to a service mark in this para

graph can only be done if there is a guarantee from both

the mark owner or mark licensee or recipient of license, to

maintain the quality of service traded.

For the purpose, it needs a special guideline for

mulated by the mark owner ( licenser or party transferring

the mark) on methods of or procedures for providing ser

vices attached by the mark.

.rticle 42 up to article 45

Sufficiently clear

Article 46

In the case of the owner of a registered mark not

using his/her mark directly in the trade of goods or ser

vices in Indonesia, the use of the mark by a licensee is the

same as the use by the owner of the registered mark. It

connects with possibilities of delisting of registration of

marks which are not used in the trade of goods or services

for 3 (three) months consecutively as meant in Article 61

paragraph (2) letter a.

Article 47 up to article 49

Sufficiently clear

Article 50


Sufficiently clear

aragraph (3)

Provisions on, amongst others, nature, general

characteristics and quality of goods or services as well as

their supervision contain a definition that there are

requirements which must be fulfilled by parties taking part

in using the collective mark.

Paragraph (4)

Sufficiently clear


Sufficiently clear

Article 56

• Paragraph (1)

A geographical indication is an indication or iden

tity of a product originating on a certain place, region or

territory that shows the quality, reputation and character

istics, including natural and human factors used as an

attribute of the product. Marks which can be used as a

geographical condition can take the form of etiquette or

label attached to the production. The marks can be in the

form of name of place, region or territory, word, picture,

letter or combination of the elements. The name of place

can originate from a name mentioned in the geographical

map or name known as the name of place of origin of thesaid product due to the continuous use. The protection of

geographical indication covers natural resources, agricul

tural products, handicraft; or certain industrial products.

Paragraph (2)

Ins t i tu t i ons represen t ing comm un i t i es in reg ions

produc ing goods are institutions authorized to register

geographical indications and the institutions constitute

government institutions or other official institutions, such

as cooperatives, associations and others.

Paragraph (3) up to paragraph (9)

Sufficiently clear

Article 57 up to article 60Sufficiently clear

Article 61

Paragraph (1)

Sufficiently clear

Paragraph (2)

Letter a

The latest use means the use of the mark for goods

or services which are traded. The moment of the latest

use is calculated from the date of the latest use even though

the goods are still distributing in communities.

Letter b

The unsuitability in the use covers the unsuitabil-

ity in the form of writing of word or letter or the unsuit

ability in the use of different color.


Sufficiently clear


Sufficiently clear

Article 68

Paragraph (1)

Interesting parties means, amongst others, pro

secutor, consumer advocacy foundations/institutions and

religious councils/ institutions.


Sufficiently clear

Article 69

Paragraph (1)

Sufficiently clear

Paragraph (2)-

The definition con t raven ing re l i g ious mo ra l i t y ,

decency or publ ic order is the same as that as contained

in elucidation on Article 5 letter a. Also included into the

definition contravening public order is bad intention.



18/18

23A


Sufficiently clear

Article 75


Sufficiently clear

Paragraph (3)

This law stipulates provisions on possibilities of

the use of part of non-tax state revenue (PNBP) by the

Directorate General, which comes from all costs connected

with mark.

To use t he revenue means the use of PNBP on the

basis of systems and mechanisms in force. In this case,

the whole revenue is remitted directly to the state trea

sury office as PNBP. Later, the Directorate General through

the Minister submits an application to the Minister of

Finance for using part of PNBP in accordance with the need

permitted by law, which is now regulated in Law No. 20/

1997 on Non-Tax State Revenue (Statute Book of 1997

No. 43).


Sufficiently clear

Article 80

Paragraph (1)

Chairman of the Court of Commerce means the

Chairman of the Court of Commerce in place where the

Court of Commerce is located.

Paragraph (2)

Sufficiently clear

Paragraph (3)

Unless otherwise stipulated, the secretary of the

court as meant in this law is the secretary of the Court of

Commerce.


Sufficiently clear

Paragraph (7)

Bailiff means a bailiff at the State Court/ Court of

Commerce.


Sufficiently clear

Articles 81 and 82

Sufficiently clear

Article 83


Sufficiently clear

Paragraph (6)

Documents of appeal means application for

appeal, appeal memory, and/ or contra-appeal memory as

well as other documents.


Sufficiently clear

Article 84

Sufficiently clear

Article 85

Letter a

This provision is intended to prevent the party

whose right is violated from suffering a bigger loss so that

the Court of Commerce is authorized to issue a provisional

stipulation for preventing the continuous violation and

goods allegedly violating right to a mark from coming into

trading lanes, including the importation.

Legal action of appeal or appeal to the Supreme

Court cannot filed against the provisional stipulation.

Letter b

The provision aims at preventing violators from

causing the evidence to despair.

Article 86

Paragraph (1)

Letter a

Evidence o f ma rk owne rsh ip means a certificate

of mark. In the case of the applicant of stipulation being a

licensee, the evidence can be in the form of letter of

recording of licensing agreement.

Letter b

Sufficiently clear

Letter c

The information is in the form of details of kinds

of goods or kinds of serv ices suspec ted as products

resulting from the violation against mark.

Letter d

Sufficiently clear

Letter e

The amount of guarantee is equal to the value of

goods or the value of services subj ected to the provisional

stipulation.

Paragraph (2)

Sufficiently clear

Article 87

Sufficiently clear

Article 88

Letter a

Sufficiently clear

Letter b

In the case of the guarantee money being in the

form of bank guarantee, the judge instructs for cashing

out the guarantee into cash money.

Articles 89 up to article 101

Sufficiently clear

SUPPLEMENT TO STATUTE BOOK OF

THE REPUBLIC OF INDONESIA NO. 4131

Business News 6664-6665/19-9-2001

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