Likelihood of Confusion and Ex Officio Refusals: How the DGIP Blocks Conflicting Marks (Article 21(1))

Like several other Southeast Asian jurisdictions, Indonesia conducts ex officio examination for relative grounds during the trade mark registration process. Under Article 21(1) of Law No. 20 of 2016 on Marks and Geographical Indications (the Trademark Law), the Directorate General of Intellectual Property (DGIP) will proactively search and refuse applications that are identical or similar to prior registered marks or prior pending applications. This means that conflicts with existing marks are typically identified and addressed before the mark reaches registration — placing a premium on thorough pre-filing clearance.

The Legal Framework: Article 21(1)

Article 21(1) of the Trademark Law provides multiple grounds for refusal based on conflicts with other marks:

• Article 21(1)(a): The mark is substantively similar to or identical with a registered mark of another party or a prior pending application for the same type of goods and/or services.
• Article 21(1)(b): The mark is substantively similar to or identical with a well-known mark of another party for similar goods and/or services.
• Article 21(1)(c): The mark is substantively similar to or identical with a well-known mark of another party for different goods and/or services that fulfil certain requirements.

The Elucidation to the Trademark Law defines “substantive similarity” as similarity caused by dominant elements between two marks that create an impression of similarity in terms of form, placement, writing, combination of elements, or phonetic similarity.

The Ex Officio Examination Process

After a trade mark application passes formal examination and the two-month publication period, the DGIP conducts substantive examination based on Articles 20, 21, and 22. During this examination, the DGIP examiner:

• Searches the Indonesian register: The examiner compares the application against all registered marks and pending applications on the DGIP database.
• Assesses similarity: The examiner evaluates whether the applied mark is substantively similar to or identical with any prior mark, considering visual, phonetic, and conceptual factors.
• Considers oppositions: Any oppositions filed during the two-month publication period are taken into account during the substantive examination.
• Issues a decision: If the examiner finds grounds for refusal under Article 21, the application is refused. The substantive examination should be completed within 150 working days, though delays are common.

Importantly, the DGIP’s examination goes beyond the applicant’s specific class. Article 21(1)(a) covers “the same type of goods and/or services,” which can extend across Nice classes where the goods or services are related. This cross-class assessment is similar to the approach taken in Thailand and other ASEAN jurisdictions.

How the DGIP Assesses Similarity

While the DGIP has not published a formal public examination guideline, the Trademark Law’s Elucidation and consistent practice indicate that the similarity assessment considers:

• Dominant elements: The comparison focuses on the most prominent element of each mark. For composite marks, the word element is typically treated as dominant if it is the element consumers would use to identify and refer to the mark.
• Visual similarity: The overall appearance, structure, layout, and spatial arrangement of the marks.
• Phonetic similarity: How the marks sound when spoken, including in Bahasa Indonesia pronunciation. This is explicitly listed in the Elucidation as a ground for finding similarity.
• Conceptual similarity: The meaning or idea conveyed by each mark, including translations and associations in Bahasa Indonesia.

The Opposition Process

Before substantive examination, applications are published for a two-month opposition period. Any interested party may file an opposition during this window. Oppositions are considered by the examiner during substantive examination alongside the examiner’s own search results.

The two-month opposition period is strict and cannot be extended. Once it closes, there is no mechanism for late filing. This makes trade mark monitoring essential for brand owners who want to catch conflicting applications at the earliest opportunity.

The Appeal Process

If an application is refused under Article 21, the applicant may appeal to the Trademark Appeal Commission (Komisi Banding Merek) within 90 days of receiving the refusal notification. The appeal must contain a detailed explanation of the grounds for disagreement with the refusal. The Trademark Appeal Commission is an independent body within the Ministry of Law and Human Rights that reviews the DGIP’s decisions.

Strategic Recommendations

• Conduct comprehensive pre-filing searches: Because the DGIP examines for relative grounds ex officio, any conflict with a prior mark will surface during examination. Search the DGIP database thoroughly before filing to anticipate potential citations.
• Search beyond your target class: The DGIP’s “same type of goods and/or services” standard can extend across Nice classes. Search related classes to identify potential cross-class conflicts.
• Consider phonetic similarity in Bahasa Indonesia: The DGIP considers how marks sound in Bahasa Indonesia pronunciation. Two marks that appear different in English may be phonetically similar when pronounced by Indonesian consumers.
• File oppositions promptly: The two-month opposition window is the most cost-effective point for challenging conflicting applications. Monitor the DGIP Gazette and act quickly.
• Prepare for the appeal process: If your application is refused on similarity grounds, the 90-day appeal window to the Trademark Appeal Commission is your primary recourse. Prepare detailed arguments distinguishing your mark from the cited prior mark.

Common Mistakes

• Assuming similarity issues are raised only by competitors: The DGIP identifies conflicts on its own initiative. A prior mark owner need not file an opposition for the conflict to block your application.
• Searching only the target Nice class: The DGIP may cite marks registered in different but related classes.
• Underestimating phonetic similarity: Marks that look different visually may be phonetically similar in Bahasa Indonesia, leading to a refusal.
• Missing the two-month opposition window: The opposition period cannot be extended. Without monitoring, conflicting applications pass through unopposed.

Key Takeaway

Indonesia’s ex officio examination under Article 21(1) means that the DGIP proactively searches for and blocks applications that conflict with prior marks, including across related goods and services. This front-loaded system makes thorough pre-filing clearance essential, as conflicts will be identified during examination regardless of whether the prior mark owner takes any action. The two-month opposition window provides an additional layer of protection, but it is strict and non-extendable. For applicants, anticipating and addressing potential conflicts before filing is the most effective strategy for achieving registration in Indonesia.