What is a substantive examination?
According to Article 23 Paragraph 1 of Law No. 20 of 2016 regarding Trademark and Geographical Indication, a substantive examination is an examination carried out by the Examiner to application for registration of Mark.
Substantive examination can produce 2 decisions, as follows:
- If the application for registration of mark is considered not contradict to Articles 20 and 21 of the Law No. 20 of 2016 regarding Trademark and Geographical Indication, the DGIP will grant a registration number and then issue a registration certificate for the mark. The registration number is started by letters IDM and followed by 9 digit numbers.
- If the application for registration of mark is considered contradict to Articles 20 and 21 of the Law No. 20 of 2016 regarding Trademark and Geographical Indication, the DGIP will issue a notification of provisional refusal, for which the applicant or its proxy may file a written argument against the provisional refusal within 30 days counted from the Mailing Date of the notification (Article 24 Paragraph 3)
Article 20
Mark cannot be registered if it:
- contradicts to the State ideology, laws and regulations, morality, religion, decency, or public order;
- is similar to, related to, or merely mentioning the goods and/or services being applied for registration;
- contains any element which may mislead the public in respect to its origin, quality, type, size, variety, intended use -12- of goods and/or services being applied for registration or constitute a name of protected plant variety for similar goods and/or services;
- contains description that does not correspond to quality, or efficacy of produced goods and/or services;
- is devoid of any distinctive character; and/or
- constitutes a generic name and/or public sign.
Article 21
- An Application is refused if the Mark is substantively similar to or identical with:
- a prior registered Mark of other parties or prior Mark application in respect of similar goods and/or services;
- a well-known Mark of other parties for similar goods and/or services;
- a well-known Mark of other parties for different goods and/or services complying with certain requirements; or
- a registered Geographical Indication.
2. An application is refused if the Mark:
- constitutes or is similar to name or initial of a wellknown individual, photograph, or name of legal entity owned by other person, unless under a written consent from its proprietary;
- constitutes as duplication or is similar to name or initial, flag, symbol or State emblem, or both national and international agency, unless under a written consent from the authorities; or
- constitutes as duplication or is similar to official signs or seal or stamp used by a country or Government agency, unless under a written consent from the authorities.
3. An Application is refused if it is submitted by an Applicant in bad faith.
4. Further provisions regarding the refused Mark Application as referred to in section (1) point a to point c are regulated by a Ministerial Regulation.
Further, if the applicant or its proxy filed argument against the provisional refusal issued by the DGIP, the Examiner will conduct the substantive re-examination on the basis of the argument filed. Otherwise, the DGIP will issue a notification of official rejection with the reason that there is no argument against the provisional refusal.
If the argument against the provisional refusal is accepted, the DGIP will grant a registration number and then issue the registration certificate.
In the meantime, if the argument against the provisional refusal is not accepted, the DGIP will issue a notification of official rejection for which the applicant or its proxy may file an appeal with the Trademark Appeal Commission within 90 days counted from the Mailing Date of the notification (Article 29 Paragraph 1).
