Trademark Opposition: What It Means And What To Do

By Putu Doni WD, Seven Stones Indonesia

Indonesia has adopted something called the first-to-file system in its Trademark Law, which basically means the protection of a trademark is granted to the first applicant to file, and then successfully receive registration for that application. Despite this however, a trademark owner should always remain vigilant of “trademark squatters”, who attempt to register an identical or confusingly similar mark, which could potentially mislead customers in the market.

In light of this, the Indonesian Trademark Law (Law No. 20 of 2016 on Mark and Geographical Indication “MGI”) provides the opportunity for third parties, including registered trademark owners, to oppose trademark applications, which they think may harm their rights if registered.

Opposition can be submitted at anytime during the two-month publication period, which must be in writing and submitted to the Directorate General of Intellectual Property (DGIP). The submission of opposition can now be done electronically through a system managed by the DGIP and is later forwarded to the applicant. The applicant on the other hand has a chance to argue by filing a written rebuttal. Both, opposition and rebuttal are collectively taken into account by trademark examiners during the substantive examination stage.

There are a few grounds of opposition, ranging from being identical or very similar with a prior trademark application or registration of the opposing party, to contradicting prevailing laws and regulations. Bad faith can also be a reason to oppose if the opposing party has discovered any indication of bad faith from the applicant in filing the mark. Whatever the reason is, the opposing party is advised to prepare significant evidence to complement their arguments highlighted in the opposition. If someone argues that an application has to be refused it’s virtually the same as the well-known mark of the opposing party, then the opposing party needs to file relevant evidence to show proof, such as crowded registration of the mark in other countries around the world and massive promotion of the mark globally. 

Filing an opposition does not always result in favorable outcomes however. Results are unpredictable as they mainly rely on the examiners’ subjective discretion. It is worth noting that filing an opposition during the application stage is important for the proprietor of registered marks in defending their right, and could be more cost-effective. This is because the only resource left if a confusingly-similar mark is registered, is by filing a cancellation lawsuit to the Commercial Court, which is complicated, time-consuming and expensive.

If you’d like more advice or a private consultation regarding your trademark, get in touch with us today through hello@sevenstonesindonesia.com

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Andrzej Barski

Director of Seven Stones Indonesia

Andrzej is Co-owner/ Founder and Director of Seven Stones Indonesia. He was born in the UK to Polish parents and has been living in Indonesia for more than 33-years. He is a skilled writer, trainer and marketer with a deep understanding of Indonesia and its many cultures after spending many years travelling across the archipelago from North Sumatra to Irian Jaya.

His experience covers Marketing, Branding, Advertising, Publishing, Real Estate and Training for 5-Star Hotels and Resorts in Bali and Jakarta, which has given him a passion for the customer experience. He’s a published author and a regular contributor to local and regional publications. His interests include conservation, eco-conscious initiatives, spirituality and motorcycles. Andrzej speaks English and Indonesian.

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Terje is from Norway and has been living in Indonesia for over 20-years. He first came to Indonesia as a child and after earning his degree in Business Administration from the University of Agder in Norway, he moved to Indonesia in 1993, where he has worked in leading positions in education and the fitness/ wellness industries all over Indonesia including Jakarta, Banjarmasin, Medan and Bali.

He was Co-owner and CEO of the Paradise Property Group for 10-years and led the company to great success. He is now Co-owner/ Founder and Director of Seven Stones Indonesia offering market entry services for foreign investors, legal advice, sourcing of investments and in particular real estate investments. He has a soft spot for eco-friendly and socially sustainable projects and investments, while his personal business strengths are in property law, tourism trends, macroeconomics, Indonesian government and regulations. His personal interests are in sport, adventure, history and spiritual experiences.

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His experience includes being the Managing Director at one of the top investment banking groups in the region, the Recapital Group, the CFO at State-owned enterprises in fishery industry and the CEO at Tanri Abeng & Son Holding. He’s also been an Independent Commissioner in several Financial Service companies and on the Audit and Risk Committee at Bank BTPN Tbk, Berau Coal Energy Tbk, Aetra Air Jakarta as well as working for Citibank, Bank Mandiri and HSBC. His last position was as CFO at PT Citra Putra Mandiri – OSO Group.

Ridwan has won a number of prestigious awards including the Best CFO Awards 2019 (Institute of Certified Management Accountant Australia-Indonesia); Asia Pacific Young Business Leader awarded by Asia 21 Network New York USA (Tokyo 2008); UK Alumni Business Awards 2008 awarded by the British Council; and The Most Inspiring Human Resources Practitioners’ version of Human Capital Magazine 2010.

He’s a member of the Board of Trustees of the Alumni Association of the Faculty of Law, Trisakti University, Co-Founder of the Paramadina Public Policy Institute and actively writes books, publications and articles in the mass media. He co-authored “Korupsi Mengorupsi Indonesia” in 2009, which helps those with an interest in understanding governance in Indonesia and the critical issue of corruption. Ridwan speaks Indonesian and English.

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