The responsibility to assure the enforcement of trademark protection in Indonesia is on behalf Directorate General of Intellectual Property Rights (DGIPR- referred as Directorate General). The institution is under Department presided by the Ministry of Justice and Human Rights of the Republic of Indonesia.

     With regard to international conventions concerning Intellectual Property Rights (IPR) and in particular, concerning Trademark, Indonesian government has ratified conventions below:

1. Agreement Establishing the World Trade Organization, Annex 1C Trade-Related Aspects of Intellectual Property Rights (TRIPs) by the Law of the Republic of Indonesia Number 7 of 1994 concerning Ratification of Agreement Establishing the World Trade Organization
2. Paris Convention for the Protection of Industrial Property and Convention Establishing the World Intellectual property Rights Organization (WIPO) by Presidential Decree Number 15 of 1997 concerning the Amendment of Presidential Decree Number 24 of 1979
3. Trademark Law Treaty by Presidential Decree Number 17 of 1997

     From the above definition of trademark, several basic elements of trademarks can be concluded as follow: 1) mark is a sign, 2) it has distinction power ⁸ , and 3) used in trade of goods and/or services. Infringement of trademark usually lessens or even deprives the distinction power of the mark infringed, so that the mark loses its function. The sign itself can be in the form of either: 1) picture, 2) name, 3) word, 4) letters, 5) figures, 6) composition of colours, or 7) combination thereof.

     The acknowledgment by State on a mark possessed by a person or a legal entity is granted in the form of an exclusive right to himself use the mark or to grant permission to another party to use it. RI Trademark Law Art. 3 rules:

     “The right to a mark is the exclusive right granted by the State to the owner of a mark which is registered in the General Register of marks for a certain period of time, to himself use said mark or to grant permission to another party to use it.”

     Concerning “permission” RI Trademark Law Rt. 1 par. 13 rules:

     “License shall mean a permission granted by the owner of a registered mark to another party by means of an agreement based on the grant of right (not the transfer of right), to use the relevant mark, either for all or some of the kinds of goods and/or services that are registered for a certain of period of time and certain requirements.”

     The exclusive right granted by the act of registration. The right is not obtained at the time the said mark is invented or used, but the time when it is registered. This system of registration is acknowledged as constitutive system, in which registration become absolute mandatory to obtain the exclusive right ⁹ – which means also legal protection.

     Such system can be compared with the other system recognized by jurists in IPR registration system; that is declarative system. In this system, registration plays function only as evidence that the registrant is the first user of the said mark. This kind of registration does not raise a right; it provides only legal assumption (rechtsvermoeden) or presumption iuris that the party whose mark is registered is the most entitled to and as the first user of the said mark.¹⁰

      In contradiction to the former Law, the latest RI Trademark Law applies the constitutive system instead of the declarative. The aim is to ensure legal assurance for the mark owner.¹¹

     There are negative qualifications which enable the mark not to be registered. The qualifications are ruled in Art. 4 and 5 of the RI Trademark Law as such:

1. concerning the applicant (Art. 4): a mark shall not be registered on the basis of an application by an applicant having bad faith.
2. concerning the mark itself (Art. 5): a mark shall not be registered if it contains one of the following elements: a) contradicting with the prevailing rules and regulation, morality of religion, or public order; b) having no distinguishing features; c) having become public property; or d) constituting information or related to the goods or services for which registration is requested.

     RI Trademark Law also puts another negative qualification that shall result in refuse on the part of the Directorate General, according to Art 6 par. (1) of the RI Trademark Law, when the mark in question:

1. has a similarity in its essential part or in its entirety with a mark owned by  another party which has previously been registered for the same kind of goods and/or services;
2. has a similarity in its essential part or in its entirety with a well-known mark owned by another party for the same kind of goods and/or services;
3. has a similarity in its essential part or in its entirety with a known geographical indication.

Further in Art. 6 par. (3) an application for registration of a mark shall also be refused by the Directorate General if:

    a. it constitutes or resembles with the name of a famous person, photograph, or the name of a legal entity belonging to another party, except with a written consent of the entitled party;

    b. it constitutes an imitation or resembles with a name or abbreviation of a name, flag or coat of arms or a symbol, or an emblem of a state, or of a national or international institution, except with a written consent of the competent authority;

    c. it constitutes an imitation or resembles with an official sign or seal or stamp used by a state or a government institution, except with a written consent of the competent authority.

     In conclusion, to acquire legal protection under RI Trademark Law by means of registration, a mark shall meet the following requirements: 1) the said mark is a sign having distinction power of goods or services; 2) being used in trade; and 3) not fulfil either of Art. 4, 5 and 6 of the Trademark Law.

B. Procedure of Registration

     Prior to registration, the applicant shall file an application in writing in the Indonesian language at the Directorate General. The application shall be signed by the applicant or his proxy.¹² An application that is filed by an applicant who resides or permanently domiciles outside the territory of the Republic of Indonesia must be filed through a proxy in Indonesia and shall state and choose the address of his proxy as his legal address in Indonesia.¹³
RI Trademark Law also recognizes priority right, which according to Art. 1 par. 14 is defined as right of an applicant to file an application originating from a member country of the Paris Convention for the Protection of Industrial Property or the Agreement Establishing the World Trade Organization (WTO) in order to get recognition that the filing date of the country of origin be the priority date in the country of designation that is also a member country of the two agreements, provided that the filing date of the application is made during the period prescribed in the Paris Convention for the Protection of Industrial Property. Furthermore, Art. 11 rules that an application with a priority right shall be filed within a period of 6 months at the latest, commencing from the first filing date of the application in another country, which is a member of the Paris Convention for the Protection of Industrial Property or a member of the WTO.

8. Tim Lindsay, et.al., Hak Kekayaan Intelektual Suatu Pengantar, Alumni Bandung, 2003, p. 135.

9. Rachmadi Usman, Hukum Hak atas Kekayaan Intelektual: Perlindungan dan Dimensi Hukumnya di Indonesia, Alumni, Bandung, 2003, p. 331.

10. Muhammad Djumahana and R. Djubaedillah, Hak Milik Intelektual: Sejarah, Teori, dan Praktiknya di Indonesia, Citra Aditya Bakti, Bandung, 1997, p. 173.

11. Sudargo Gautama, Undang-undang Merek Baru, Alumni, Bandung, 1992, p. 5.

12. RI Trademark Law, Art. 7 par. (1) and (2). Art. 1 par. 8 stated that proxy shall mean a consultant of IPR.

13. RI Trademark Law, Art. 9 par. (1) and (2).