Background
On 25 November 2016, the Government of Republic Indonesia enacted new trademark law, namely Law No. 20 of 2016 on Trademark and Geographical Indication (“Trademark Law 2016”). Following the enactment of Trademark Law 2016, the Minister of Law and Human Rights also issued Regulation No. 67 of 2016 on Trademark Registration (“MOLHR Regulation 67/2016”) as the implementing regulation of Trademark Law 2016. In principle, the provisions of transfer of rights to registered trademark as stipulated under the Trademark Law 2016 are same as the previous trademark law, i.e. Law No. 15 of 2001 on Trademark. There are however some changes in the Trademark Law 2016 that should be known by entrepreneurs.
Transfer of Rights to Registered Trademarks
The transfer of rights to a registered trademark occurs due to several matters, such as:
a. inheritance;
b. testament;
c. waqf;
d. grant;
e. agreement, or
f. other reasons permitted under the prevailing laws and regulations.
Under the Trademark Law 2016, if the owner of trademark as the transferor owns more than one trademark that is similar in principle or as a whole for the same kind of goods or services, then the transfer of right can only be made if the transferor transfers the other trademarks to the same transferee. In contrast with the previous trademark law, the Trademark Law 2016 allows the transfer of right for pending trademark application. It means the transfer of right can also be made for a trademark that is still in the process of application. Different with the previous trademark law, the Trademark Law 2016 is silent with the provisions of transfer of good name, reputation or other related matters in relation to the transfer of registered trademark.
Recording the Transfer of Right
The transfer of registered trademark will be recorded in the general register of trademark, through an application to the Directorate General of Intellectual Property (“DGIP”), along with its supporting documents, as follows:
a. evidence of transfer of right, such as (a) fatwa of inheritance, (b) testament letter, (c) deed of waqf, (d) deed of grant, (e) deed of agreement, or (f) other evidences permitted by the prevailing laws and regulation;
b. copy of trademark certificate, excerpt of registered trademark, or trademark application;
c. certified copy of deed of legal entity, if the transferee is a legal entity;
d. identity card of applicant;
e. power of attorney, if the application is submitted by an Intellectual Property Consultant;
f. proof of payment for the application fees.
If the above mentioned documents of the transfer of right are made not in Indonesian language, then the applicant has to enclose the translation of documents by a sworn translator. The DGIP will examine the completeness of supporting documents at the latest 15 days from the receipt date of application. If the supporting documents are complete, the DGIP will record the transfer of right in the general register of trademark at the latest 6 months from the receipt of application.
The transfer of rights that has been recorded will be announced in the official report of trademark. For the transfer of right of pending trademark application, the DGIP will only announce it in the official report of trademark. The transfer of right to registered trademarks shall have no legal consequence to the third party if it is not recorded in the general register of trademark.
Ivor Pasaribu
