Responding Trademark Office Action (Nonfinal or Final Office Action) from the Directorate General of Intellectual Property

Initial Rejection (Nonfinal Office Action) or Final Rejection (Final Office Action) is a notice from the Directorate General of Intellectual Property (“DGIP”) that the applicant’s mark is considered to have violated Article 20 or Article 21 of Law No. 20 of 2016 concerning Mark and Geographical Indication (“Mark Law”).

When the applicant receives a notice of Initial Rejection (Nonfinal Office Action), it has 30 (thirty) working days from the delivery date of notification to respond to such notice of Initial Rejection (Nonfinal Office Action). The response to Initial Rejection (Nonfinal Office Action) shall be submitted to the DGIP for further examination by the officials (see Article 24 Paragraph (3) of Mark Law).

Meanwhile, if the DGIP still rejects the argumentation and insists on the similarity of the mark and registered mark, the DGIP will then send a notice of Final Rejection (Final Office Action). In this stage, the applicant has another legal step within 90 (ninety) working days from the delivery date of notification by responding to a notice of Final Rejection (Final Office Action) to the Mark Appeal Commission (see Article 29 Paragraph (1) of Mark Law).

Despite having sufficient time to address the response to the notice of initial rejection or final rejection, the applicant has their way to address their argumentation and evidence. Oftentimes the applicant could not address the argumentation convincingly and in a good manner resulting in the DGIP rejecting the mark application.

Accordingly, these are arguments to support the applicants in responding to the notice of Initial Rejection (Nonfinal Office Action) or Final Rejection (Final Office Action).

1. The Applicant’s mark is not violating Article 20 and/or Article 21 of Mark Law
   Since the applicant has to deny claims of violating Article 20 and/or Article 21 of Mark Law, it is required to elaborate on the distinctive features between the applicant’s mark and a registered mark, such as appearance, pronunciation, font, meaning, color, combination thereto, types of goods, etc.The applicant could also claim that there are marks registered in DGIP having similar meanings or appearance, or an arbitrary mark, thus the applicant’s mark should also be registered by the DGIP.Thereby the applicant may close its argumentation by stating that the mark application is filed in good faith.
2. The Applicant’s mark is a well-known mark and is registered in various countries
   If the applicant has proof of registration in other countries, it may become important tools to convince DGIP and/or Mark Appeal Commission because once it has been registered in other countries, the registration in DGIP shall apply the same.

Through addressing the two main arguments above, hopefully, the DGIP or Mark Appeal Commission may understand the background of the mark and convince to grant the mark application.
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