By: Prudence Jahja, Managing Partner, and Andrew F. Diamond, Foreign IP Consultant, at Januar Jahja and Partners
On 17 August 2019, the Indonesian Trademark Office (DGIP) launched a new online filing system that limits applicants to selecting only certain pre-approved goods and/or services that are already found in the system. This has created an extra layer of work for foreign counsel/applicants and the local agent alike to the task of preparing trademark applications, since it may take one or two revisions to complete a specification that both provides the applicant with the proper scope of protection and also is acceptable to the online system.
Almost one year on, certain best practices have emerged to limit the time needed to build out acceptable specifications; further, the Trademark Office has released more information regarding the very limited circumstances in which they will add items that are not already in the system.
The current system was meant to improve the previous system that allowed applicants to manually enter whatever goods and/or services they wanted to cover. However, this system resulted in thousands upon thousands of formality office actions issued by Examiners due to misclassification of goods/services, necessary deletion of prohibited items, and/or lack of clarity, among other issues. This led to a huge backlog in application examination. The laudable goal of the new system is to eliminate this aspect of the formality examination, thereby easing the burden on the Trademark Office and reducing examination times.
Once Indonesia became a member of the Madrid Protocol and started receiving International Registration (IR) designations on 2 January 2018, the Indonesian Trademark Office began to increasingly use and rely on WIPO’s Madrid Goods and Services (MGS) Manager (https://webaccess.wipo.int/mgs/) for guidance on classification of goods and/or services. Now, the Trademark Office has publicly stated that it is following MGS and also the Nice Classification system, even though it has not officially been adopted. Primarily, what that means is the online filing system’s list of pre-approved items pretty much matches those items found in either MGS or Nice.
Under the current online filing system, local agents can access searchable lists of pre-approved goods and services in both English and Indonesian to determine if a proposed item would be acceptable for inclusion in the specification a filed. If an item is not found in the system, then it cannot be selected and local counsel should try to identify an acceptable alternative that is available. There are very limited circumstances (see below) in which the Trademark Office will consider adding items that are not found in the system.
In view of the above, trademark applicants are encouraged to use MGS for selecting goods and/or services to build out their specifications for Indonesian trademark applications. By using MGS, it is very likely that the desired item is already in the Trademark Office’s system, thereby reducing the need for further revision and avoiding filing delays, allowing all parties to work more efficiently and quickly. Noting that Indonesia is a first to file jurisdiction where the filing date is often given outsized importance, the prompt filing of trademark applications becomes even more vital.
As mentioned above, there are certain limited circumstances in which the Trademark Office will consider a request to add new items to the system. Based on communications from the Trademark Office to local agents, these circumstances are:
- Goods/services that are listed on MGS and/or Nice Classification but not listed on the Trademark Office’s online system;
- Traditional Indonesian goods/services;
- Goods/services that are related to applications claiming priority from another country, which must be proven by providing the priority documents
In each case, an email is sent to the Trademark Office’s Classification Division requesting the desired addition. In practice, No. 1 is the most straightforward way to have items added to the online system. No. 2 is unlikely to be used by non-Indonesian applicants.
With regards to No. 3, in practice, even if the goods/services are listed on the priority application, the Trademark Office will still review the request and has the discretion to decide whether such goods/services will be added to the system. Based on experience, they will not add them if the goods/services are not also listed on MGS. In that case, local counsel should help find other suitable alternatives that are already in the system or are at least in MGS to replace the unavailable items. Depending on the situation, another possibility is to remove such items from the specification (i.e., if they are already covered by another acceptable item, etc.).
While this current system may be new for some people and seem like a lot of work, the burden and time required can be reduced. As such, it is important to start using recommended tools like MGS so that new applications can be prepared and submitted as quickly and efficiently as possible, keeping in mind the first to file system in Indonesia.