DETERMINING CRITERIA OF “SIMILARITY IN ESSENTIAL” ON TRADEMARK

DETERMINING CRITERIA OF “SIMILARITY IN ESSENTIAL” ON TRADEMARK

In the process of trademark registration, there are several requirements and rules that must be obeyed so that the application for trademark registration can run smoothly and the trademark will not be rejected. One of the regulations that needs to be considered is Article 21 paragraph (1) of Law Number 20 of 2016 concerning Trademarks and Geographical Indications (Trademark Law) which states that:

Application is rejected if such Mark has basic or entire similarity with:

1. Registered Mark of other party or already applied previously by other party for similar goods and/or services;
2. Well-known Mark owned by other party for similar goods and/or services;
3. Well-known Mark owned by other party for non-similar goods and/or services that fulfils certain requirements; or
4. registered Geographical Indication.

Based on the said provision, it can be seen that in order to avoid the rejection from the Directorate General of Intellectual Property (DGIP)  then the filing trademark must not have the entire similarity (totally similar) or similarity in essential with registered mark of other party, well-known mark and/or registered geographical indication. Thus, the problem arises is what similarity in essential meant?

In the elucidation of Article 21 paragraph (1) of the Trademark Law, it is explained that what is meant by Equation is basically the similarity caused by the presence of a dominant element between one Mark and another, giving rise to the impression of equality, both regarding the form, placement method, method of writing or a combination of elements or similarities in the sound of speech, which are contained in said Mark.

This definition is in line with the nearly resembles doctrine which views that a Mark is essentially similar to another’s Mark if the Mark is identical or almost similar to another person’s. The determination of the existence of similarities can be based on several factors, namely:

1. Similarity to the image equation;
2. Almost the same or almost identical of word order, color, or sound;
3. It is not absolute that the goods have to be of the same type or class;
4. The use of a brand creates actual confusion or deceives the consumer community.

The most important factor in this doctrine is the use of a Mark that has similarities in essence which can cause real confusion or deceit the public as consumers. Since, if there are 2 (two) trademarks which are visually “similar” this will create a perception as if the Mark comes from the same manufacturer. Thus, it can be seen an element of bad faith to take advantage of other people’s brand fame.

Furthermore, apart from those stipulated in the elucidation of Article 21 paragraph (2) of the Trademark Law, there are many jurisprudences which also explain the determinants of “Similarity in Essential” which when summarized in general terms the determination is carried out by considering the similarities in phonetic, visual, and conceptual trademark

1. Phonetic Similarity

Phonetic Similarity is similarity of pronunciation or sound. In determining phonetic similarities in a trademark, one must pay attention to syllables, word structures, and intonation of words. The sound in the syllable really determines whether there is a phonetic Similarity in a trademark, the phonetic similarities is generally determined on the word mark, name or slogan where the sound similarity is possible in the pronunciation. The similarity in sound of two different brands can create the impression of overlapping between one brand and another. As a result, it can be deceptive or misleading. Examples of brands that have a phonetic equation are: Power with Pawer then Mewah with Mevvah

2. Similarity in Visual

Similarity in Visual is similarity which measured from the point of view of the trademark itself, whether in color, way of placement, shape, or a combination of these elements that can deceive or mislead consumers from the origin of one trademark to another.

3. Similarity in Conceptual

Similarity in Conceptual is the similarity on the basis / philosophy and/or meaning contained in the brand. If a mark uses a foreign language which is commonly used/known to the public for its meaning, the examiner can reject it on the basis of another brand which means the same. An example of the conceptual equation is: a rose brand with a rose (device mark).

Source:

• Indonesian Trademark Law No.20 of 2016
• Elucidation of Indonesian Trademark Law No.20 of 2016
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