CHANGES IN OWNERSHIP OF TRADEMARK REGISTRATION
Trademarks portfolio should serve as one of important elements when there has been changes in trademark ownership, e.g. when one entity decided to enter into merger agreement. In order to ensure the trademark registrations are in order, there are things that require attention concerning the trademark registrations.
All changes related to registered mark should be recorded with the Directorate General of Intellectual Property Rights (DGIPR).
Changes of ownership can happen for many reasons, among others, mergers, assignment due to sales or acquisition, or change of name.
According to the Trademark Law, the rights to a registered mark may be transferred by:
- inheritance;
- testament;
- donation;
- agreement; or
- other reasons recognized by law.
The transfer of rights to a registered Mark must be filed at the Directorate General to be recorded in the General Register of Marks, which must be accompanied by supporting documents.
The transfer of rights to a registered Mark which has been recorded by the Directorate General shall be announced in the Official Gazette of Marks. The transfer of rights to a registered Mark which is not recorded in the Directorate General of Marks shall not have legal consequences to any other party.
Before the transfer of rights is recorded with the Directorate General of IPR, the new company cannot take any legal action on any civil or criminal law suit against any infringement of their marks, they cannot file any opposition against the similar marks filed by other parties, or filing a renewal of the transferred marks.
Delay in having the transfer of rights recorded with the Directorate General of IPR can also cause rejection against any new application filed by the new company that has a similarity in principal or in entirety with the transferred marks for the same kind of goods and/or services.
The transfer of rights to a registered Mark may be accompanied by the transfer of good-will, reputation or other things related to the Mark.
The transfer of rights to a registered Mark may only be recorded by the Directorate General if it is accompanied with a written statement from the receiver of rights that the relevant Mark will be used for trade of goods and/or services.
Required documents for filing a recordation of Merger of Trademark are as follows (for foreign applications):
- A simply-signed Power of Attorney;
- A simply-signed Statement of Use of Mark;
- A notarized and legalized Deed of Merger (up to the Indonesian Consulate).
Thank you for your attention, should you have any further queries, please do not hesitate to contact us.
Neneng Sri Wiyanti, SE., SH.