Why Indonesia’s Trademark Workflow Overhaul Matters for Global IP Strategy
Indonesia’s Directorate General of Intellectual Property (DGIP), in collaboration with WIPO and several representatives from local IP firms, including SKC Law, recently engaged in a stakeholder discussion on optimizing Indonesia’s trademark workflow. Here, we’ll explore the key issues raised during discussion and outlining implications for IP rights holders.
A System Under Pressure
Indonesia’s has seen rapid growth in IP filings, but its infrastructure requires improvements in several areas to keep pace. The recent “Trademark Workflow Optimization Project,” a follow-up to WIPO’s IP Business Services Assessment Mission, aims to address longstanding inefficiencies in examination, publication, and certificate issuance.
The Issues: Inconsistency, Inaccessibility, and Inefficiency
The discussion revealed several systemic challenges:
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Examination inconsistency |
Identical marks with identical goods/services are being registered or rejected unpredictably. |
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Descriptive marks slipping through |
Weak marks are being accepted due to inconsistent application of distinctiveness standards. |
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Outdated or draft guidelines |
The ASEAN Common Guidelines (last updated in 2018) are non-binding, while Indonesia’s national guidelines remain unpublished. |
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Lack of transparency in oppositions |
60–70% of opposition outcomes are not accompanied by clear reasons for decisions, limiting strategic clarity. Written decisions often not available until further follow up from opposing party. |
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Appeals bottlenecks |
Decisions take 6–9 months, often delayed by manual signatures and limited panel capacity. |
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Digital system shortcomings |
Glitches in the IPRO Online platform pose challenges to the primarily online submission system; such as delays in uploading of decisions and issues related to goods and services descriptions available in the system. |
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Certificate inaccuracies |
Typos, inconsistency in the order of list of goods and/or services, and missing items are common, with rectification requiring manual follow-up and weeks of delay. |
| Madrid Monitor discrepancies |
DGIP’s records often conflict with WIPO’s, especially concerning trademarks filed through the Madrid Protocol System. |
Why This Matters
These issues are more than administrative hurdles – they are strategic risks. Inconsistent examination and delayed decisions can derail product launches, complicate business decisions, and weaken enforcement. For Indonesia to become a reliable origin country for international registrations under the Madrid Protocol, its trademark infrastructure must be able to communicate ‘confidence’ better.
Insights and Takeaways
1. Push for Predictability
The absence of binding examination guidelines creates uncertainty. Parties involved should advocate for quick finalization and publication of guidelines, in line with ASEAN standards.
2. Demand Digital Accountability
The IPRO Online system must evolve. Batch filing, real-time status updates, and automated notifications are necessities. Firms should document system failures and push for transparency for improvements.
3. Insist on Written Decisions
Whether in oppositions or appeals, written rulings are vital for building stronger strategies and maintaining client trust. Parties involved should call for faster, published decisions and full access to all rulings.
4. Support WIPO Integration
Adopting the WIPO Madrid Online Filing System would streamline international filings and reduce reliance on the current overburdened infrastructure. However, human oversight remains a possible area of error – DGIP must maintain responsive support for certification and post-registration actions.
5. Prepare for Corporate Transactions
Inaccurate certificates can derail M&A deals. IP owners should audit their portfolios proactively and initiate rectifications well in advance of any corporate action.
6. Clarify Assignment Formalities
The inconsistent requirement for notarial deeds in assignments involving Indonesian entities adds cost and confusion. Clear, published guidelines are urgently needed.
If you’re facing challenges with trademark filings, oppositions, or international registrations in Indonesia, contact our team for practical guidance.
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