By: Agus
Candra Suratmaja & Nadya Prita Gemala
Both are
Advocates, Registered IP Consultants and Registered PVT Consultants, as well as
Non-Judicial Mediators.
A trademark that is
still under application or already registered at the Directorate General of
Intellectual Property (DGIP), Ministry of Law of the Republic of Indonesia, may
be transferred from one party to another. The legal basis for trademark assignment
is regulated under Article 41 paragraphs (1) to (9) of Law No. 20 of 2016 on
Trademarks and Geographical Indications, and further under Minister of
Law and Human Rights Regulation No. 67 of 2016 as amended by Regulation No. 12
of 2021 concerning Trademark Registration.
Below are several
important points regarding trademark assignment:
Types of
Trademark Assignment
A trademark application or a registered trademark may be
transferred on the following grounds:
1. Inheritance
2. Testament
(will)
3. Waqf
4. Grant
5. Agreement
6. Other causes
permitted under prevailing laws and regulations
Explanation:
“Other causes permitted under prevailing laws” refer to transfers
that do not violate legal provisions, such as change of trademark ownership due
to dissolution of a legal entity, restructuring, merger, or acquisition (see
Article 41 paragraph (1) of Law No. 20 of 2016).
In the event of an assignment, the assignor and assignee must
provide documentary evidence supporting the legal basis of the transfer.
Additional
Supporting Documents
In addition to the documents mentioned above, where the assignment
is filed through an IP Consultant, further documents are typically required:
a. Certified copy of the legal entity deed if the assignee is a
legal entity.
Usually
supported by: Business Identification Number (NIB), Company Tax ID
(NPWP), Deed of Amendment and approval from the Directorate General of Legal
Administration (AHU), if applicable.
b. Identity documents of the previous trademark owner and the new
owner:
·
Indonesian ID card (KTP) for Indonesian citizens
·
Passport for foreign nationals
c. Power of Attorney for recording the trademark assignment
through an IP Consultant (mandatory if the applicant is a foreign national or
foreign legal entity).
Assignment
Documents Must Be Sworn Translated
If the assignment documents are in a foreign language, an
Indonesian translation prepared by a sworn translator must be attached (see
Article 39 paragraph (2) of Regulation No. 67 of 2016).
Examination
Process of Trademark Assignment
Duration of
Examination
Under Article 43 paragraph (3) of Regulation No. 67 of 2016, the
examination of a trademark assignment recordal application shall be completed
within 15
working days from receipt of the application. Day shall refer
to working day (see Article 1 paragraph (14) of Regulation No. 67 of 2016)
Timeframe for
Recordal by DGIP
Within
a maximum of 6
(six) months from the date the application and required
documents are declared complete, the Minister shall record the assignment
(Article 45 paragraph (1) of Regulation No. 67 of 2016).
Marks of the Same Kind Must All Be Assigned to the Same Party
That if we have a
coffee shop trademark certificate for example under the mark name Juragan
Kopi in Class 43 for the type of coffee shop services to be transferred in
ownership to a third party, then if we have a trademark certificate in Class 30
for the type of coffee goods, then this Class 30 trademark certificate must
also be transferred to the same party. Because Coffee Shop and Coffee are both
of the same kind related to Coffee even though coffee shop is in Class 43 and
coffee is in Class 30. This is in accordance with the explanation in Article 41
Paragraph (2) of Law Number 20 of 2016 concerning Trademarks and Geographical
Indications as follows:
“The Transfer of
Rights over a registered Mark by a Mark Owner who has more than one registered
Mark which has similarity in its essential part or in its entirety for goods
and/or services of the same kind may only be carried out if all of those
registered Marks are transferred to the same party.”
Thus based on the
explanation of the article above, the owner of the Juragan Kopi mark, if
wishing to transfer his trademark certificates in Class 43 for coffee shop
services and Class 30 for coffee goods, then both related classes must be
transferred to the same party.
Recording of
Trademark Assignment Must Be Recorded at DGIP, Ministry of Law of the Republic
of Indonesia
That based on
Article 41 Paragraph (6) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications it is stated that:
“Transfer of Rights
over a registered Mark that is not recorded shall have no legal effect on third
parties.”
The meaning of the
above Article is, if Party A as the initial trademark owner only carries out
the transfer of rights by Notarial deed to Party B, but the Deed of Transfer of
Rights is not recorded at DGIP, Ministry of Law of the Republic of Indonesia, then
if at some time Party B will make a police report or a lawsuit against another
party suspected of infringing its mark, then it will not be able to create
legal consequences toward third parties, because on the trademark certificate
it is still under the name of Party A. Because Party B has not yet carried out
the recording of the transfer of its trademark rights to DGIP, Ministry of Law
of the Republic of Indonesia. Therefore, it is very important to carry out the
recording of the transfer of trademark rights at DGIP, Ministry of Law of the
Republic of Indonesia with the assistance of an official Intellectual Property
Consultant registered at DGIP, Ministry of Law of the Republic of Indonesia.
Trademark
Assignment and its Recordal Before the DGIP as an Alternative to Overcome Cancellation
Lawsuits
Where a party discovers a registered trademark in Indonesia owned
by a third party that is identical or substantially similar to its own mark, an
assignment followed by recordal at DGIP may serve as an amicable
settlement to avoid more coercive legal action such as a
trademark cancellation lawsuit before the Commercial Court.
Interested parties (directly or through legal counsel) may
approach the registered owner to negotiate assignment, typically involving
compensation. Once an agreement is reached, a deed of assignment can be
prepared, signed by both parties, and notarized before an Indonesian Notary
Public. If one party is foreign, representation by legal counsel or local
representative is possible.
The IP Consultant will then file the assignment recordal at DGIP.
Once recorded, ownership officially transfers to the assignee.
Conclusion
Such negotiations are best handled with the assistance of
experienced IP lawyers or IP consultants.
For further inquiries or if you have an interest in a registered
trademark in Indonesia and wish to explore assignment options, please feel free
to contact us at:
Email : info@konsultanki.com
Whatsapp : +62813 17 906 136
We will be pleased to assist you further.
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