The trademark sign will be a differentiator from one of the other products. As a “differentiator sign”, the word or name used in a trademark should not be a common term used in everyday life (Generic Terms). The generic term is a general category or class of goods or services rather than a specific brand or product.
It will lead to unfair business competition because people are already used the terms in daily life. It is a consequence of the exclusive rights granted by the state to the generic trademark owner. To fully understand the discussion on this topic, please continue reading the following article.
Case Study
One recent case example is Apple Inc v. U.S. Patent and Trademark Office, No. 1:22-cv-01231, U.S. District Court for the Eastern District of Virginia. Some people who are Apple users may be familiar with several brands of Apple products, such as “Smart Watch,” “Smart Cover,” “Smart Case,” and “Smart Connector”. Several Apple products are labeled/named “smart,” so now people are starting to associate products that use “smart” as accessories from Apple products. However, the USPTO then took issue with using the term “smart keyboard” as a generic term that could be interpreted as “keyboard with smart technology.” So the USPTO argued that the term “smart keyboard” should not be registered as a trademark.
However, if you look at Apple products as described earlier, the term “smart” has been used as a brand on several Apple products. It means that if the name “smart keyboard” is legally disputed, then brands on other products will also have similar cases. This case is still ongoing in its development, but both parties have not provided further information.
Viewpoint of Trademark Law in Indonesia
Article 22 of Law No. 20 Year 2016 on Trademarks and Geographical Indications states that against a registered trademark, which becomes a generic name, any person may apply for a trademark by using the generic name with the addition of other words as long as there is a distinguishing element. The legal consequence of using the generic term on the trademark is that the trademark cannot be registered and will be refused registration.
In the Intellectual Property Database (PDKI) of trademarks in Indonesia, several Apple Inc. product trademarks have been registered for the Apple Smart Connector, Smart Cover, IPAD Smart Case, iPhone Smart Battery Case, and Airpods Max Smart Case. These brands have been registered and legally accepted in Indonesia.
In the Intellectual Property Database (PDKI) of brands in Indonesia, several Apple Inc. product brands have been registered, including the Apple Smart Connector, Smart Cover, IPAD Smart Case, iPhone Smart Battery Case, and Airpods Max Smart Case. These trademarks have been registered and legally accepted in Indonesia.
Conclusion
A Trademark will be accepted in registration if it still has a distinguishing element, so even though the name of a brand contains generic terms, if additional elements distinguish it, it can still be registered as a brand. For example, in this case, Apple has several trademark named “smart” in its products. Still, the IPAD Smart Case, iPhone Smart Battery Case, and Airpods Max Smart Case are not categorized as prohibited trademark names because they still have the words “IPAD,” “iPhone,” and “Airpods” as distinguishing elements.
Because of some differences between lay interpretation and legal interpretation by a legal expert, it is highly recommended to consult with a legal expert to get a better and practical sense of legal advice and registration and trademark protection strategies.
Am Badar & Am Badar can be one of the law firms that can help you to provide trademark legal protection for your company. As one of the law firms established in 1956, Am Badar & Am Badar has been trusted to handle legal issues from clients from various countries worldwide. If you are interested in using our legal services to help secure the intellectual property law of your business, don’t hesitate to get in touch with us via ambadar@ambadar.co.id
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