Avoiding Trademark Application Rejection

Brands are a crucial component of a business that could be a deciding factor in its success. It’s essential for business owners to register their trademarks as soon as possible in order to avoid possible disputes or any other unwanted disturbance. The process of applying for a trademark registration is simple, but that doesn’t mean that every application would be granted. There are certain things that Partners must be aware of before applying for registry. Law No.20/2016  on Trademarks, stipulated that applications would get rejected if it contains elements that:

  • contradicts to the State ideology, laws and regulations, morality, religion, decency, or public order
  • is similar to, related to, or merely mentioning the goods and/or services being applied for registration
  • contains any element which may mislead the public in respect to its origin, quality, type, size, variety, intended use of goods and/or services being applied for registration or constitute a name of protected plant variety for similar goods and/or services
  • contains description that does not correspond to quality, or efficacy of produced goods and/or services
  • is devoid of any distinctive character
  • constitutes a generic name and/or public sign

Furthermore, the main objective of a trademark is to distinguish a product from its competitors. Therefore, it’s obvious that Trademark Law would reflect on existing registered trademarks when reviewing applications. Article 22 of Trademark Law stipulates that an application would be refused if the mark is substantially similar to:

  • a prior registered Mark of other parties or prior Mark application in respect of similar goods and/or services
  • a well-known Mark of other parties for similar goods and/or services
  •  a well-known Mark of other parties for different goods and/or services complying with certain requirements
  • a registered Geographical Indication.

Aside from other Marks, Partners must also make sure that a proposed Mark does not constitute, or is similar to:

  • constitutes or is similar to the name or initial of a well known individual, photograph, or name of legal entity owned by another person, unless under a written consent from its proprietary
  •  constitutes as duplication or is similar to name or initial, flag, symbol or State emblem, or both national and international agency, unless under a written consent from the authorities
  • constitutes as duplication or is similar to official signs or seal or stamp used by a country or Government agency, unless under a written consent from the authorities.

Partners might wonder. Trademark Law often mentions “similarity”– a question arises: what would constitute “similar”? What are the parameters concerning this? This is a very subjective matter, but it’s important to know that similarity could be measured in three forms

  • Visual

similarities in the shape of the mark, similarities in the placing of certain elements, similarities in the color arrangement or combinations of these elements.

  • Conceptual

similarities in philosophy and meaning behind in the mark

  • Phonetic

based on the similarity in pronunciation of a mark.

Lastly, Article 21 of Trademark Law stipulates that trademark registry would be rejected if it was submitted in bad faith. “Bad faith” in this sense would refer to applicants who are reasonably suspected in registering his/her Mark has the intention of imitating, plagiarizing, or copyingthe Mark of another party for the sake of his/her business interests, creating conditions of unfair business competition, deceiving, or misleading consumers. Therefore, it is important for Partners to ensure that the Marks registered are truly original and not too similar to other Marks.

Conclusion

Trademark registry is a simple process if the applicants are well prepared. It’s best for Partners to do extensive research on other Marks before setting up an application. Research could be done on such sites as PDKIWIPO database, or ASEAN TM View. However, if Partners would like the registration process to run as smoothly as possible, with quality consultation and services regarding Marks, please contact us via marketing@ambadar.co.id. We will ensure the best service according to your needs.

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