The Trademark Office has recently stopped issuing Administrative Rejections - a huge relief.
In early 2013, the Trademark Office began issuing what we came to refer to as Administrative Rejections. At the formalities examination stage, notices were being issued by the TMO requiring that applied trademarks be amended by removing elements regarded as incapable of functioning as a trademark. A (fictitious) example to illustrate the point might be the COCA-COLA Logo here, with which the problem element might have been “5c AT FOUNTAINS IN BOTTLES 5c”. These types of ‘packaging’ trademarks are often incorporated in trademark prosecution strategies to compensate for the lack of workable unfair competition laws in Indonesia.
The principle issue with Administrative Objections was that there was no legal basis. According to articles 7 - 12 of the Trademark Law, the Trademark Office must assign an application date where an application is filed with: completed application form (form IV); Power of Attorney; Declaration of Ownership; and correct goods or services classification. The Trademark Law does not provide for any other basis for refusing to assign an application date, and the Administrative Objections did not refer to any legal authority within the notice.. Notwithstanding, with the Administrative Objections the Trademark Office was effectively refusing to assign a filing date for applied trademarks unless and until the problem was resolved as directed.
The Administrative Objections stated that an element of the applied trademark was not capable of functioning as a trademark. In the absence of any further explanation from the Trademark Office, presumably this was on the basis of either descriptiveness or a lack of distinctiveness. Any objections on either of these two basis is of course properly dealt with in an Office Action (according to articles 20(2) and 18 of the Trademark Law) to which an applicant has a right to respond (according to article 20 (3) of the Trademark Law). This right to respond to substantive objections is a fundamental feature of the Trademark Law, affording fairness in examination of applications under a system specifically stated to be in the spirit of ensuring fair competition in business in Indonesia. Denying applicants the right to respond to substantive objections was not within the spirit of the Trademark Law, and in the circumstances against prevailing laws.
In January 2014, the Director of Trademarks agreed that the practice was without legal basis, and ordered that all such notices be cancelled, and original filing dates assigned to applications. She also ordered that no such notices be issued in future. We have confirmed with the Chief of Applications and Publications Sub-Directory at the TMO that these orders are now being put into practice, and the Administrative Objections are no longer being issued.