COMMON WORD AS MARK
Common word can be filed as a mark as long as it has distinguishing elements from other marks. This is in accordance with the regulation of Article 22 of Law No. 20 of 2016 regarding Trademark and Geographical Indication that “For Registered Mark that subsequently becomes generic name, each Individual may submit Mark Application by using the referred generic name with addition of other wording, as long as there is a differentiating element.”
In order to have distinguishing elements, these common words can be paired with other words and / or devices. Such common words that have been registered by DGIP are “GAJAH DUDUK” for the kind of goods sarongs, “MAMA LEMON” for the kind of goods dishwasher detergents, and “LARUTAN PENYEGAR” for the kind of goods soft drinks.
Nevertheless, before filing an application for registration of mark, it is advisable for the applicant to conduct a mark search in order to know whether or not there is a similar mark that has been previously filed with and/or registered by the DGIP so it can estimate the percentage of registration of the proposed mark. In this case, applicant may contact a trusted IP consultant to assist in analyzing the search result.
Although common words can be registered as marks, it is advisable for applicant to use coined words so that the percentage of registration of its proposed mark is higher because the possibility to be similar to other marks that have been previously registered is low, such as SAMSUNG, YAMAHA, and JUUL.
