Protection of Trademark in Indonesia begins with the application to register a Trademark. An application for Trademark rights must be made in order to obtain a certificate of proof of Trademark ownership. Without Trademark registration, the owner of a Trademark does not have exclusive rights to the Trademark and is not recognized as the owner of the Trademark by the Government. The legal consequence is that the Trademark becomes very vulnerable to being registered under someone else’s name. This is in line with the principle of protection and ownership of a Trademark, namely First to File, where the first registrant in good faith is considered the owner of the Trademark.
A Trademark applied to be registered at the Directorate General of Intellectual Property (DITJEN KI) is not automatically eligible for registration. In order to obtain protection and recognition from the government, a Trademark which is applied for registration must go through several registration processes, including announcement of Trademark registration and substantial evaluation of the Trademark.
Prior to being accepted for registration, a Trademark registration will be announced within a 2 (two) month period. This is done to inform the public of the registration application so that any parties objecting to the registration of a certain Trademark can write to the Directorate General of Intellectual Property to address their objections. The Directorate General will then forward the letter to the Trademark applicant for a response. If the objection letter is received and the response from the Trademark applicant is rejected, the Trademark examiner will propose the rejection of the Trademark registration.
If no other party submits an objection to the registration of a Trademark, or their objection letter is rejected, then the registration process will proceed to the substantive evaluation stage. At this stage, a Trademark may be rejected if there are substantial similarities or if it is wholly similar to a registered Trademark owned by another person (Article 21 of Law No. 20/2016).
Rejection caused by substantial similarities may cause confusion for some Trademark applicants. Through this short article, we aim to dissect more deeply regarding the substantial similarities as referred to in Article 21 of the Trademark Law, so that Trademark applicant can as much as possible avoid rejection of their Trademark application due to any substantial similarities.
Substantial similarities or in entirety can be interpreted as the existence of very dominant similarities between a Trademark applied for registration and a Trademark already registered. Similarities can be found in its shape, placement, way of writing or combination of elements, as well as the sound of speech contained in the Trademark. Such similarities may cause confusion or can be misleading for consumers in buying or consuming a product, goods and/or services.
The rejection of a Trademark registration can certainly be very detrimental to the Trademark owner, especially for applicants with good faith. Trademark registration requires a long period of time. On the other hand, the promotion period for the product cannot wait for the Trademark to be certified first because of the long process of Trademark registration. Thus, rejection of Trademark registration has material and psychological impact on the applicant. For example, if a Trademark that has just been applied for registration, has been promoted and is popular in the market, but then the Trademark gets rejected for registration, of course to rebrand the product is not an easy matter. Therefore, in order to increase the chances of being accepted for registration, we provide some tips as follows:
- Registration in good faith
Registration in good faith is important in owning a Trademark. Good faith in registering a Trademark avoids the applicant from problems arising in the future due to the registration of the Trademark. The implementation of good faith in registration for example is by not imitating or applying for a Trademark which is substantially similar or entirely belongs to another person, whether it be an already registered Trademark or not.
- Registering a word that the registrant created
A Trademark is an identity; thus the more common the word used for a Trademark, the more likely it is that other people will use the same name. A word that is newly created, means, it may not have a literal meaning in language, but it is a suitable word for the brand. Some major brands that have succeeded in conducting business with a word they newly created for the brand are: NIKE, ADIDAS, FANTA, COCA COLA, TOYOTA, etc.
- Doing a search through of registered Trademarks at DITJEN KI
Another tip for registering a Trademark is to first search for a registered Trademark. Meaning, try to find out whether there is already a Trademark registered in the same class classification, which has similarities with the Trademark to be registered. This is not an easy thing but does not mean it is impossible. To be able to do this, at least the applicant must know about the NICE CLASSIFICATION. This knowledge is very important because in principle, Trademark protection is given based on the class of the type of product.
Regarding this searching process, the weaknesses of the Trademark registration system in Indonesia to date are:
- Information on the Trademark registration applicants is not provided or updated in real time
- Data on the Intellectual Property database at the DITJEN KI is also not updated optimally, thus making the searching process for registered Trademarks more difficult
- Trademarks with similarities are not detected automatically. For example, the brand “SLAKIFA” with “SALKIPA”, will not be automatically detected by the search engine in the searching process. Therefore, it requires analysis and prediction skills from the ones doing the searching process.
The abovementioned things also need to be considered in conducting the searching process so as to minimize the possibility of rejection of the Trademark registration.
Those are some tips that can be employed in trying to avoid rejection when applying for Trademark registration. By doing the things mentioned above, at least the Trademark being applied has a greater chance of being registered and receive protection.
Dr. Andrew Betlehn, SH., S.Kom. MM., Advocate and Intellectual Property Consultant who has been practicing Intellectual Property Law for 8 (eight) years. Founder of Betlehn Law Office, that is here to provide solutions for businessmen and Trademark owners alike in protecting their Intellectual Property assets. Intellectual Property owners can utilize their time more effectively and efficiently to develop other aspects of their business, with advice and help in managing their Intellectual Property assets as given by Dr. Betlehn and his partners at Betlehn Law Office.