ProdukHukum Perdagangan

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LAW NO. 15/2001 DATED AUGUST 1,2001 M A R K

BY THE GRACE OF GOD ALMIGHTY

THE PERSIDENT OF THE REPUBLIC OF INDONESIA,

Considering :

a. that in the global trade era, in line with the ratification of international conventions by Indonesia, the role of marks becomes very important, particularly in maintaining the sound business competition;

b. that in relation thereto, marks need adequate regulation 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 law, 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. Mark is a sign in the form of picture, name, word, letters, figures, configuration of colors or combination of the said elements which has distinguishability and is used in trading activities of goods and services.

2. Trade mark in a mark used in goods traded by somebody 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 somebody or several persons collectively or statutory bodies for distinguishing the services from other goods of the same kind.

4. Collective mark is as mark used in goods and/or services 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 applications 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

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10.Directorate General is the Directorate General of Intellectual Property Rights subordinate to the department 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 property rights 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 Directorate 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 Organization 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 Property.

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.

Part Two

Unregisteredable and rejected mark

Article 4

A mark cannot be registered on the basis of an application submitted by an applicant with the bad intention.

Article 5

A mark cannot be registered if it contains any of the 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:

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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 geographical 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 application if the mark:

a. being or having resemblance to names of popular figures, photos or names of statutory bodies owned by other parties, unless otherwise based on the written 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

government 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 Indonesian language to the Directorate General by

mentioning:

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 in 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 statutory 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 intellectual property rights.

(9) Provisions on requirement regulation, while procedures for the appointment of the consultant are regulated by a presidential 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 mention 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 paragraph (1) are further regulated by a government

regulation.

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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 domiciled 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

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 Establishing 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 application for the first time, which results in the priority right.

(2) The evidence of the priority right as meant in paragraph (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 submit 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 completeness of the requirements as meant in paragraph (1), the Directorate General 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 requirements as meant in Article 12, the deadline of

completion 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 in the 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 having 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.

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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 for registration of mark

Article 16

Every application is only allowed to change in name and/or address of the applicant or his/her proxy.

Article 17

(1) As long as a decision does not yet obtain from the Directorate General, applicants or their proxies can withdraw 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 withdrawal.

(3) In the case of an application being withdrawn, all costs already paid to the Directorate General cannot be taken off.

CHAPTER IV

REGISTRATION 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, 5 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) The 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 and allowance, besides other rights in accordance with laws in force.

Article 20

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(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 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 applicant 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 acceptable, based on the approval of the Directorate 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 unacceptable, based on the approval of the Directorate General, a decision on the rejection of the said application 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 withdrawn.

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 commencement 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 application 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

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(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 objection as meant in paragraph (1) can be submitted 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 of letter containing the objection to the relevant applicant 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 objection 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 paragraph (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 application is declared approved for registration in Mark Gazette.

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 expiration of the announcement period.

(2) In the case of the objection as meant in Article 26 paragraph(5) being unacceptable, 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 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 registered 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 application form the first time, in the case of the

application being submitted by using a priority right;

e. etiquette of the registered mark, including information 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 translation into the Indonesian language, Latin letters or figures common in the Indonesian language, as well as its pronunciation in Latin spelling;

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g. the validity period of registration of mark.

(4) Every party can submit an application for obtaining official 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 in 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 substantive examination.

(4) The reasons as meant in paragraph (3) must not be correction or improvement of the rejected application.

Article 30

(1) Every application for appeal is submitted not later than 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) 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 General records and announces the rejection.

Article 31

(1) The Mark Appeal Commission makes a decision not later than 3(three)

(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 rejection.

(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 presidential decree.

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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(1) are appointed and relieved by the

Minister 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 number of members being odd, at least 3(three) persons, and out of them, one is senior auditor not examining the application substantively.

Part Two

Procedure for litigating in the Court of Commerce

Article 80

(1) A lawsuit for nullifying the Court of Commerce in jurisdiction of address or domicile of the defendant. (2) In the case of the defendant being domiciled outside the Chairman of Central Jakarta Court of commerce. (3) The secretary of the court registers the lawsuit for the annulment on the date g 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 annulment to the Chairman of the Court 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 annulment, the Court of Commerce studies the lawsuit and stipulates the date of legal proceedings.

(6) The legal proceedings for the lawsuit for the annulment 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 for the annulment.

(8) A decision on the lawsuit for the annulment must be read out not 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 considerations 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 parties not later than 14 (fourteen) days after decision on the lawsuit for annulment is read out.

Article 81

The procedure for litigating as regulated in article 80 is effective mutates mutandis for the lawsuit as stipulated in Article 76.

Part Three

Appeal to the Supreme Court

Article 82

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Article 83

(1) Every 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 by means of registering is read out 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 relevant 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 he appeal.

(3) The applicant of appeal to the supreme court must have conveyed an appeal memory to the date registration 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 secretary of the applicant of the appeal not later than 2 (two) days after the secretary of the court receives 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 period as meant in paragraph (5) elapses.

(7) The supreme Court must study the document of the appeal as meant in paragraph (6) stipulate the date of legal proceeding 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 appeal, 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 application for the appeal must be read cut 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

considerations which become the basis for the said decision must be read in legal proceedings open for the public.

(11) The secretary of the Supreme Court is obliged to convey the decision on the appeal to the secretary of the court not later than 3 (three) days after decision on the application for the appeal is read out.

(12) Bailiff must content of the decision on the appeal as meant in paragraph (1) 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 disputes through arbitration or alternative for the settlement of disputes.

CHAPTER XII

PROVISIONAL STIPULATION OF THE COURT

Article 85

Based on sufficient evidence, every party whose right is inflicted can ask judges of the Court of Commerce to issue a provisional stipulation on :

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Article 86

(1) Every application for the provisional is submitted in writing to the Court Commerce with the requirements as follow :

a. attaching evidence of right ownership;

b. attaching evidence of strong initial indications of violation 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 in Article85 being already executed, the Court of Commerce promptly notifies subjected to actions and open opportunity for the parties to have their information heard.

Article 87

In the case of the judge of the Court of Commerce 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 from the date of the stipulation.

Article 88

If the provisional stipulation is :

a. fortified, the guarantee money already paid must be returned to the applicant of the stipulation and said applicant can file the lawsuit as meant in Article 76;

b. revoked, the guarantee money already paid must promptly given up to the party subjected to the action as a compensation for the provisional stipulation.

CHAPTER XII INVESTIGATION

Article 89

(1) In addition to the investigators of the Indonesian Police Force, certain civil servant officials at the Directorate 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 latter a;

c. ask information and evidence from persons or statutory bodies in connected 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 allegedly containing evidence, bookkeeping, records and other documents as well as confiscating materials and products of the violation which can be used as evidence 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 mean in paragraph (1) notify the commencement of investigation to

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(4) The civil servant investigators as meant in paragraph (1) convey results of their investigation to Public Prosecutors through investigators of the Indonesian Police Force by observing the provision in Article 10 of Law No. 8/1981 on Criminal Code.

CHACTER XIV CRIMINAL PROVISION

Article 90

Whoever internationally and unrightfully uses a mark totally the same as a registered mark belonging to the other party for goods and/or services of the sama kind which are produced and/or traded is sentenced to imprisonment of 5 (five) years at the maximum and/or a fine of Rp. 1.000.000.000,00 (one million rupiah) at the maximum.

Article 91

Whoever Intentionally and unrightfully uses a mark principally the sama as a registered mark belonging to the other party for goods 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.

Article 92

(1) Whoever Internationally and unrightfully uses a mark totally 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 5 (five) years at the maximum and/or a fine of Rp.1.000.000.000,00 (one million rupiah) at the maximum.

(2) Whoever Intentionally and unrightfully uses a mark principally 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. 900.000.000,00 (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 imitation of a registered and protected mark on the basis of geographical indications.

Article 93

Whoever intentionally and unrightfully uses a protected mark on the basis 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 sentenced to imprisonment of 4 (four) years at the maximum and/or Rp.800.000.000,00 (eight hundred million rupiah) at the maximum.

Article 94

(1) Whoever trading goods and/or services ascertained or noteworthy to ascertain that the said goods and/or services result from the violations as meant in Articles 90, 91 and 93 is sentenced to imprisonment of one year at the maximum and /or a fine of Rp 200.000.000,00 (two hundred million ) at the maximum.

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

Article 95

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CHAPTER XV

TRANSITIONAL PROVISION

Article 96

(1) Every application 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 registration 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 settled on the basis of the provision in the said law.

(2) All marks already registered on the basis of Law No.19/1992 as meant in Law No.14/1997 on mark and still valid upon the promulgation 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 Low 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 regulations 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 promulgation.

For public cognizance, this law shall be promulgated by placing it in Statute Book of the Republic of Indonesia.

Ratified in Jakarta On August 1,2001

THE PRESIDENT OF THE REPUBLIC OF INDONESIA Sgd

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Promulgated in Jakarta On August 1,2001

THE SECRETARY OF STATE Sgd

MUHAMMAD M. BASYUNI

STATUTE BOOK OF

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ELUCIDATION ON

LAW NO.15/2001 CONCERNING

M A R K

I. GENERAL

The widespread globalization in both social, economic, 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 still continues in the future. Developments of technology, information and transportation have caused trading activities to grow rapidly and even positioned the world as the collective sole market.

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 developments and in line with international agreements already ratified by Indonesia as well as experiences from executing 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 old mark law

needs to be improved by a new mark law.

Compared to the old mark law, contrast differences in this law deal with, among others, the settlement of an application. Pursuant to this law, substantive examination is executed after the applications fulfill administrative 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 period of an application will be shorter totally in the framework of enhancing service for the public.

In connection with a priority right, this law stipulates that in the case of an application failing to meet evidence of receipt of an application resulting in the priority right for the first time in 3 (three) months after the expiration 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 on application being the loss of on application. For that purpose, it needs regulation capable of helping the applicant to ascertain reasons for the rejection of his/her application 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 including natural or human factor or combination thereof, giving certain characteristics and quality to the production. Moreover, it also regulates an indication of origin.

(16)

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 hose substances are not changed, are contained again in this law.

II. ARTICLE BY ARTICLE

Article 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, several persons collectively or statutory bodies.

Article 4

An applicant having good intention is an application 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 interest of this/her 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 have resemblance to the trade mark A principally or totally. Since the imitator has committed the bad intention in the example, elements of his/her intention in copying the already know trade mark at least are noteworthy to ascertain.

Article 5 Letter a

The use of a mark capable of hurting the feeling, polite behavior, orderliness and religiosity of public or certain groups of the society is included into the definition contravening religious morality, decency or public order.

Letter b

A mark is considered not having distinguish ability 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 connect with or only mentions goods or services whose registration is requested, e.g. mark of coffee or coffee picture for coffee products.

Article 6 Paragraph (1) Letter a

What is meant bay similarity in principle 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 pronunciation contained in the mark. Letter b

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independent institution to carry out a survey for making a conclusion whether the mark becoming the basis for the rejection is popular or not.

Latter c

Sufficiently clear Paragraph (2)

Letter a

Name of statutory body means the name of the statutory body used as a mark and registered at the Mark General List.

Letter b

National institutions includes mass organizations and social political organizations. Latter c

Sufficiently clear

Article 7

Sufficiently

Article 8 Paragraph (1)

In principle, an application can be submitted for more than one class of goods and/or service in accordance with provisions of Trade mark Treaty already ratified by Presidential Decree No.17/1997. It alms at facilitating the mark owner planning to use his/her mark for several goods and/or services or several classes which are not necessary to get occupied by administrative procedures requiring the separate regulation on an application for every class of the goods and/or services.

Paragraphs (2) and (3) Sufficiently clear

Article 9

Sufficiently clear

Article 10 Paragraphs (2)

Sufficiently clear

Article 11

This provision alms 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.

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 is granted by the Directorate General in the case of the application is submitted for first time.

Paragraphs (2)

Translation is done by a sworn in translator. Paragraphs (3)

(18)

-11-Article 13 Paragraph (1)

Sufficiently clear Paragraphs (2)

Date of dispatch means the date of dispatch on the basis of postal stamp. Paragraphs (3)

Sufficiently clear

Article 14

Sufficiently clear

The date receipt is known as the filing date.

The date of receipt may be as the date of regulation of an application if the whole requirements are fulfilled upon the submission of the application. If the complete requirements are just fulfilled on other date after the date of submission, the other date is the date of receipt.

Paragraphs (2)

Sufficiently clear

Article 16 up to article 18 Sufficiently clear

Article 19

Paragraphs (1) and (2) Sufficiently clear Paragraphs (3)

Career path meant the rank of functional officials as stipulated in laws in force.

Article 20 and 21 Sufficiently clear

Special means provided by the Directorate General Includes billboard. If the condition is possible, the special means will be developed by, amongst others, microfilm, microfiche, CD-ROM, the internet and other media.

Paragraphs (2)

Sufficiently clear

The application for appeal is only limited to substantive reasons or considerations becoming the basis for the said rejection. Therefore, the appeal cannot be requested because of other reasons e.g. the application is considered having withdrawn.

(19)

Paragraphs (4)

Reasons, explanations or evidence attached to an application for appeal must characteristically further deepen the reasons, explanations or evidence which have been or should be conveyed.

This provision is necessary to prevent the possibilities of appeal from being used as an instrument to complete the shortcomings in the application for fulfilling the requirements already given in the previous phase.

In executing its tasks, the Appeal commission work independently on the basis of expertise and cannot be influenced by any party.

Paragraphs (2)

Experts which can be appointed as members of the Appeal Commission can come from personnel of government or private institutions.

Senior auditors are auditor already having sufficient experience in examining applications. Paragraphs (3) and (4)

The provision that the number of members of the Appeal commission council is odd alms at enabling the decision making by means of majority votes, in the case of the divergent view.

Article 34

Sufficiently clear

In contrast to the old mark law, the period of sub-mission of an application for the extension in this law is fastest 12 (twelve) months as from the expiration of the mark protection. It is meant as a facility for the mark owner.

Paragraphs (3)

Sufficiently clear

Other cause justified by laws as long as they do not the dissolution of a statutory body formerly being the owner of the mark.

Paragraph (2)

Sufficiently clear

Paragraphs (3)

The documents include Certificate of mark and other books supporting the right ownership.

Paragraphs (4)

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Paragraphs (5)

The stipulation that the legal consequences are just effective after the transfer of to the mark is recorded in the Mark General List is intended to facilitate supervision and realize legal certainty.

The transfer of right to a service mark in this paragraph can only be done if there is a guarantee from both the mark owner or mark licensee or recipient of licensee, to maintain the quality of service traded. For the purpose, it needs a special guideline formulated by the mark owner (licenser or party transferring the mark) on methods of or procedures for providing services attached by the mark.

Article 46

In the case of the owner of a registered mark not using his/her mark directly in the trade of goods or services 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 50

Paragraphs (1) and (2) Sufficiently clear Paragraphs (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

A geographical indication is an indication or identity of a product originating on a certain place, region or territory that shows the quality, reputation and characteristics, including natural and human factors used as an attribute of the product. Marks which can be used as a geographical condition can take the from of etiquette or label attached to the production. The marks can be in the from 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 know as the name of place of origin of the said product due to the continuous use. The protection of geographical indication covers natural resources, agricultural product, handicraft; or certain industrial products.

(21)

Institutions representing communities in regions producing 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

Letter a

The latest use means the use of the mark for goods r 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 unsuitability in the from of writing of word or letter or the unsuitability in the use of different color.

Interesting parties means, amongst other, prosecutor, consumer advocacy foundations/institutions and religious councils/institutions and religious council/ institutions.

The definition contravening religious morality, decency or public 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.

Article 75

Paragraphs (1) and (2) 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.

(22)

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).

Chairman of the Court of Commerce means the Chairman of the Court 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.

Article 81 and 82 Sufficiently clear

Article 83

Paragraph (6)

Document of appeal means application for appeal, appeal memory, and/or contra-appeal memory as well as other documents.

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 violation 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 of mark ownership 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

(23)

The information is in the form of details kinds of goods or kinds of services suspected 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 subjected 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.