Trademark Refusal: How Important is Trademark Search to Undertake in Advance?

Trademark Registration in Indonesia 

Trademark law in Indonesia applies constitutively (first to file), meaning a new mark can be protected if filed at the trademark office (TMO) database. Registered trademark protection is valid for ten years from the date of application (filing date, not registration date) and may be extended for an additional ten years. Implicitly, trademark protection in Indonesia (and in nearly other countries that are parties to the TRIPS agreement) can be described as indefinite (if it is continuously being renewed).

Technically, anyone can submit trademark applications in Indonesia via the e-filing website (merek.dgip.go.id). In this instance, however, the Indonesian Trademark Law provisioned that foreign legal subject applicants have to be represented by an intellectual property consultant who resides or maintains a permanent domicile within the Republic of Indonesia. The approximate time frame for registering a trademark from the date of filing is tentative, mostly between 9 and 18 months (with or without objections and/or refusal). Anyone can monitor the entire process and status of trademark applications in Indonesia through the PDKI website (Indonesia database of intellectual property).

Grounds for Refusal of a Trademark

In the process of applying for registration of a mark, an applicant might classify the mark to be applied for in accordance with the NICE classification system, which is categorized into two types, i.e. class of goods (class 1-34) and class of services (class 35-45). This categorization is established for the sake of efficiency and uniformity among WTO (World Trade Organization) members. The classification of marks is only sometimes conclusive on the question of similarity because occasionally, entirely different goods are listed in the same class, yet obviously related goods can be included in a different class (snacks are classified in class 29 and/or class 30). Thus, Indonesian Trademark Law specifies that a mark might be refused if it is “substantively similar to or identical with a prior registered Mark of other parties or prior Trademark application in respect of similar goods and/or services,” not a mark in the same class. However, in practice, most refusals are based on similarity to a registered/previous mark belonging to another party that priorly applied for the same goods and/or services in the same class, although different goods might happened on case-by-case basis (i.e. well-known mark). 

Article 21 of the Indonesian trademark law provides a relatively broad basis for refusal, which can be based on the examiner’s subjective assessment of whether the mark will have such similarity with the prior mark. Consequently, it is essential to comprehend the concept of “similarity in principle” as described in Article 21 of the Trademark Law.

For clear understanding, “similar” does not mean identical. Of course, trademarks can be more or less similar to one another; the question is whether or not they are confusingly similar. A trademark is confusingly similar to a prior mark if it is used for similar goods and resembles the prior mark so closely that consumers are likely to be confused about the origin of the goods. If the consumer fails to purchase the thing he was supposed to purchase, the differentiating function of the trademark is rendered ineffective. This is undesirable for the consumer and the trademark owner, who loses revenue.

To ensure that the trademark is not likely to cause consumer confusion and, by extension, to prevent any opposition or rejection from being raised when applying for trademark registration, the following four considerations are essential: 

First, the most important point is that the buyer does not compare trademarks side-by-side; instead, he is often faced with the infringing mark in the market without seeing the product bearing the mark that he recognizes and remembers very well. Consideration needs to be given to the general consumer’s average memory, and it must be adequate for him to query if the mark he is confronted with is the one he knows. Don’t forget about poorly educated and children consumers, who are likely to be confused or harshly deceived.

The second important point when testing the similarity of the trademarks is that they should be compared as a whole, and that more weight should be given to common elements which may lead to confusion.

The third important point is that the highly unique part (part of the word mark or one of several words composing the mark) is exactly or almost exactly mirrored by the infringing mark. If the common feature of the two marks, on the other hand, is descriptive, the consumer’s focus is drawn to the rest of the mark.

The fourth important point is that confusion can arise from the similarity in writing, pronunciation, and the meaning of the sign, and that similarity In one area is sufficient for infringement if it misleads the public. With regard to the similarity in writing, the graphic presentation of the trademark plays an important part. The similarity in pronunciation is essential because trademarks that are written differently may be pronounced in the same way, and pronunciation counts in oral communication: even if the similarity in writing is avoided by the use of very different graphic presentation, this does not make any differences when the two trademarks are compared orally. For instance, trademark cancellation on the registered mark “Ayam Geprek Bensu” (re: Geprek Bensu Chicken) due to the similarity with the prior mark “I am Geprek Bensu (which the word “I am” has similar pronunciation with “ayam” (chicken) in Indonesia), which had derived the confusion in the market). 

Trademark Search: See Potential whether a brand can be protected

It should be noted that even if the planned registered mark already has a market segmentation, the mark examiner at TMO may reject the application for the above mentioned reasons, as well as the resemblance of the type of goods with the previously registered mark. To avoid this, it is best to conduct a trademark search beforehand. A trademark search is performed to determine whether such a mark is qualified for protection. The applicant can perform their trademark search or engage in a professional trademark search.

When conducting a trademark search, it is important to determine if a proposed trademark is identical to one already registered, including whether the previously registered marks pertain to goods in different classes or are conceptually similar. These standards must be evaluated in conjunction, as a higher degree of similarity may be accepted if the goods or services being compared are not alike. Furthermore, it is crucial to assess whether there is a possibility of confusion among consumers or if they are able to distinguish between the marks.

In addition, it is important to know which sorts of goods/service must be registered, not only for goods/services that have already been circulated but also for the possible future expansion of a single-brand business. For Example, If A, the owner of the restaurant “Yummy,” wishes to register his restaurant’s name under Class 38, he may also consider filing the brand in other classes for potential future business, such as packaged noodles, packaged chilies, etc. in class 29, which are still linear with the core business of Restaurant “Yummy.” Therefore, it is preferable to file the trademark in advance regarding the possibility of future business expansion. However, it must be noted that the mark must be used and circulated across the market to prevent third parties from filing a lawsuit against the brand owner based on “non-use cancellation.”

Conversely, several products might utilize similar marks. Then it must be determined if consumers will confuse the brands or not. Such evaluation should be conducted by a professional who specializes in trademark law, i.e. intellectual property agent. This is because the intellectual property agent possess a specialized knowledge base and extensive experience in the field of trademark law and procedures, which makes the search process more streamlined and accurate. Furthermore, they have access to extensive databases and resources that allow for a comprehensive search, thereby increasing the chances of identifying potential conflicts with existing trademarks. Additionally, an intellectual property agent can provide valuable advice and recommendations for the propose mark, increasing the chances of a successful trademark registration. 

Therefore, before submitting an application for trademark registration, it is advisable to conduct a trademark search to know the percentage-possibility of your mark registration in Indonesia (or other countries if you wish to register a trademark in another country) on the basis of similarity with registered marks or those who filed for such trademark name beforehand. Hiring an intellectual property agent can provide peace of mind and ensure that the trademark search process is handled efficiently and effectively.

Email: astari@aco-law.com

Share:

Author:

Fitri Astari Asril
Fitri Astari Asril
Associate

More Posts