ViVO Gas Station & ViVO Smartphone Have the Same Name. Is it Legal?

The ViVO gas station has recently garnered attention, primarily for providing relatively lower costs amidst rising gas prices. Moreover, some might wonder if ViVo, the gas station, has any relation with ViVO smartphone that shares not only the same name (along with the stylized “i”) but also experiences in Indonesian price wars.

Since the “Citayam Fashion Week” phenomenon, Intellectual Property, especially trademark, has been lingering in online discourse. The public may have the understanding that, generally, different parties cannot use the same mark, so they naturally suspect a connection between the ViVO gas station and the ViVO smartphone. However, it’s important to note that the same name can still be registered if it meets specific requirements. This allows ViVO, the gas station based in Switzerland, to use the same name a Chinese-based tech company used.

ViVO gas station has had its trademark registered in Indonesia since 2018 under the applicant PT. Vivo Energy Indonesia, filed under class 35 (fuel and oil for vehicles). Meanwhile, ViVO smartphone has registered its trademark in Indonesia since 2010, with Vivo Mobile Communication Co., Ltd. listed as the applicant. To support a variety of products, Vivo Mobile Communication has registered its name in many other classes, such as class 14 (key chains), 16 (stationary), 35 (retail services), 36 (digital financial services), and 37 (repair services).

From the perspective of IP, both trademarks can be officially registered at the DGIP (Directorate General of Intellectual Property) because they are filed under different types/classes. This refers to the Nice Agreement of the International Classification of Goods and Services for Mark Registration, which stipulates 34 classes of goods and 11 (35-45) classes of service to avoid monopoly. Indonesia hasn’t officially ratified the Nice Agreement but has applied its system to harmonise with international trademark registration systems.

Concerning this, article 21 paragraph (1) of Law 20/2016 has stipulated that trademark applications would be rejected if the trademark has similarities in principle or whole with well-known marks belonging to other parties for goods and/or services of a different kind that meet specific requirements. These requirements, as stipulated in Article 19 paragraph (2) of the Regulation of the Minister of Law and Human Rights of the Republic of Indonesia Number 67 of 2016 concerning Trademark Registration (“Permenkumham 67/2016”), including:

  • Registered well-known Mark.
  • there is an objection submitted in writing by the owner of a well-known Mark against the Application;

Thus, we can conclude that registering a trademark similar to or the same as an already registered trademark in another class isn’t necessarily prohibited– given that they meet requirements. Namely, the lack of objections by the party that owns the similar, already registered trademark.

Other “Vivos” also registered in Indonesia, including:

  • Vivo clothing (Class 25) from Jakarta, registered since 2006
  • Vivo glue (Class 1) from Semarang, registered since 2008
  • Vivo dental clinic (Class 44) from Surakarta, registered since 2008
  • Vivo isotonic & nutrition (Class 5), from Jakarta, registered since 2009
  • Vivo apartment (Class 46), from Jakarta, registered since 2013
  • Vivo medical equipment (Class 10) from Jakarta, registered since 2015
  • Vivo ceramics (Class 19) from Surabaya, registered since 2016
  • Vivo mild steel (Class 6) from Banten, registered since 2019

Therefore, if Partners want to register a trademark, it is recommended to use a new, unique name that has never been registered before. As part of the process of creating brand names, you could check the Intellectual Property Database to see other registered marks. Furthermore, it’s best to contact an experienced intellectual property consultant to receive advice on what steps to take next.

Our experienced, steadfast intellectual property consultants can be reached via email at marketing@ambadar.co.id.

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