Developments in the industrial sector have had a significant impact on the behavior pattern of the community in developing innovations both in the field of goods and/or services. In the field of trade, innovation will give birth to a product, so it is important that in marketing a product, goods and/or services require a distinguishing element from one product to another. That is why people are now starting to increase their awareness regarding the importance of trademark registration. This shows that businesses are increasingly aware of the importance of trademark registration so that trademark owners can use their trademarks exclusively.
The definition of a trademark itself has actually been regulated in Article 1 number 1 of Law Number 20 of 2016 concerning Marks and Geographical Indications, which contains:
“Mark means any sign capable of being represented graphically in the form of drawings, logos, names, words, letters, numerals, colors arrangement, in 2 (two) and/or 3 (three) dimensional shape, sounds, holograms, or combination of 2 (two) or more of those elements to distinguish goods and/or services produced by a person or legal entity in trading goods and/or services.”
In carrying out the registration of trademarks, Article 4 paragraphs (1) and (2) of the trademarks and Geographical Indications Law clearly stipulates matters that must be considered in the registration of trademarks, namely:
- An application for registration of a Mark shall be submitted by the Applicant or his Proxy to the Minister electronically or non-electronically in the Indonesian language.
- The Application as referred to in paragraph (1) must include:
- The date, month, and year of the Application;
- Full name, nationality, and address of the Applicant;
- Full name and address of the Proxy if the Application is submitted through a proxy;
- Color if the Mark for which registration is being applied uses color elements;
- The name of the country and the date of the first application for the Mark in the event that the Application is filed with Priority Right;
- Class of goods and/or class of services as well as a description of the types of goods and/or types of services.
Although matters relating to trademark registration have been clearly regulated according to the above provisions, there are still many mistakes made by businesses regarding trademark registration. As a result, many applications for trademark registration are rejected or cannot be registered by the Directorate General of Intellectual Property. The following are errors that often occur by business actors regarding trademark registration:
- No prior trademark search
The applicant does not first conduct a trademark search when applying for trademark registration. Trademark searches are carried out so that the registered trademarks do not have similarities with the trademarks already registered at the Directorate General of Intellectual Property. If in submitting an application for registration of a trademark there is found a similarity in principle or in its entirety to a registered trademark, the application for registration will be rejected.
- Incorrectly Filling in the Trademark Application Data
Applicants often make mistakes in filling out the trademark registration application data. The most common mistake is filling in the name and address of the trademark registration applicant. If there is an error in filling in the name and/or address, the applicant can submit a correction, as regulated in Article 18 of the Marks and Geographical Indications Law. However this will certainly take more time and the registration process will take longer to complete.
- Registering a Trademark using descriptive words or those that are public property
A Trademark cannot be registered if it has become public property or is directly the commonly used name related to the goods and/or services requested by the trademark registration applicant. For example, is an applicant is registering a trademark for a brand that sells pencils, then the name of the brand to be trademarked cannot be “Pencil” as it is directly the name of the product itself.
- Class registration doesn’t fit the business model
In registering a trademark, there are classes which have to be considered. In this case, adjusting what the business model is or will be run, it is necessary to register for classes that are in accordance with the business model. This is because if the trademark has been registered by another party first, then rebranding must be carried out from the beginning with a new trademark or brand name or by buying a brand name from another party who has registered the trademark first.
- Registering a trademarl by including misleading information
What is meant by misleading information is if the registered trademark uses superlative words or comparative sentences. This is deemed to provide misleading information to consumers of the registered trademark.
- Ignoring letters from the Directorate General of Intellectual Property regarding applications for trademark registration
During the application process there are many stages that the applicant must go through, where in each stage it is possible that the Directorate General of Intellectual Property will send a letter or e-mail to the applicant, be it regarding any errors or incomplete data. So that the applicant is required to respond to the letter in the event that the letter must be answered to within a certain period of time in accordance with the provisions of the applicable regulations so as not to result in the rejection of the application.
Based on the description above, errors in registration of a trademark often occur due to the application of the first to file principle, which means that whoever registers the trademark first is considered the holder of the rights to the trademark. Therefore, it is important for applicants for trademark registration to understand the trademark registration procedures and pay attention to the small things that often become problems in the trademark registration process.