Mark shall mean a sign in the form of images, names, words, letters, numbers, composition of colours, or a combination of said elements, having distinguishing features and is used in the activities of trade in goods or services.
IMPORTANCE OF MARK FOR A PRODUCT
From the definition of the mark, there are two important things:
- Mark is a sign of a product, which could be a sign of images, names, letters, numbers, words, or a combination thereof.
- Trademark is a distinguishing sign between one product and another. Thus, the trademark of a product may not be the same as the trademark that has been used by other products.
- Service mark shall mean a mark that is used for services traded by a person or by several persons jointly or a legal entity by several persons or legal entities to distinguish the services from others of the same kind.
On development, they are no longer just the name of a product, but already represents impression, quality, benefits, and other attributes of a product.
It is not surprising that when there are two products whose quality are relatively the same, they have different prices due to the different trademark. In other words, consumers often do not just buy a product because of the benefits or usefulness, but also consciously or unconsciously, they buy it because of the trademark’.
Thus, the importance of the trademark for a product is to give characteristics that can differentiate a product from competitors’ products which is identical or similar. This, of course, plays an important role so that consumers shall not choose wrong products or services in their decision to buy.
Aside from being a differentiator, trademark provide also other business opportunities: licensing and franchising for which they have legal protection.
Moreover, in the face of the international market, the trademark certainly has a central role both as the identity of the product as well as the main requirement to ease export process itself.
THE IMPORTANCE OF PROTECTING / REGISTERING TRADEMARK
As an identity that differentiate a product from the other, it has become a necessity to protect the identity of irresponsible riders who just want to enjoy a reputation of another person without the need to expend much effort.
Registration, according to the Trademark Law gives a person or company an exclusive right to the trademark owner to prevent others to market products that are identical or similar to a trademark owned by the company in question by using the same mark that can confuse consumers.
Without the registration of the trademark, investment in marketing a product can be something useless as rival companies may utilize the same or similar mark to create or market a product.
On the basis of the points above, we know the function of registration as follows:
- As evidence for the beneficial owner of the registered trademark;
- As a basis for the rejection of a registration of the same mark in whole or substantially the same which is filed by others for goods / services alike;
- As a basis to prevent other people from using the similar or the same overall mark principally in circulation for the goods / services alike.
IMPORTANT MATTERS IN THE REGISTRATION PROCESS
Before registering a trademark, it is good to know several matters related to the registration of the mark. It is important for a trademark owner to know the obstacles that may occur at the time of application.
Who is authorized to do trademark registration?
Everyone who wants to use a trademark or allow a third party to use the trademark belonging to a person, can do the registration of the mark. Registration can be done by individuals, associations and through the service of an IPR consultant.
When choosing a mark, it is helpful to have known ‘categories of sign’ which are not registrable as a trademark. It is advisable to check the mark to be chosen not to conflict with the underlying reasons as follows:
- Faith is not good: Trademark applicant who register improperly and dishonestly. Having the intention of piggybacking, imitating, or plagiarizing famous trademark of other parties for the sake of his efforts that results in the loss of the other party. Or rising to conditions of unfair competition, deceptive, or misleading the consumer.
For example: Trademark “A” which has been already known to the public in general for many years is replicated so much similar in principle or in its entirety by product “B”. In this case, product B has committed in bad faith as an imitator since it is clear that it has an element in imitating intentionally Trademark A which has been earlier known.
- Trademark that is considered contrary to the applicable laws and regulations, religious morality, decency and public order: Words and illustrations that are considered to violate the norms of morality and religion prevailing in society, also cannot be registered as a trademark.
- Not having distinguishing features: If the mark is too simple such as a dash or a dot, or too complicated that it is not clear.
- Words / general things: For example, if a company wishes to register the trademark CHAIR for a chair. The mark would be rejected since “chair” is a term which is familiar to the product.
- Things that are explicative / adverb: The words commonly used in trade to describe the nature of a product. For example, mark of SWEET, can be rejected for marketing chocolates as descriptive. In fact, it is unfair to give an exclusivity to any the producers of chocolate over the word “sweet” for marketing its products. So is the case with qualitative terms such as RAPID, BEST, CLASSIC or INNOVATIVE; can also be rejected unless these words are part of a different mark.
- The mark is confusing: Trademark that can confuse or mislead consumers, especially relating to the nature, quality or origin / geography of the product. Among other things, such as margarine product that use a mark that is characterized by COW will also be rejected because they can mislead consumers; the likelihood that consumers associate the mark with products from cow’s milk (such as butter).
- Flag, Armorial bearings, official symbols, emblems of countries and international organizations: the ones already presented to the International Bureau of WIPO are usually excluded from registration.
Search of Mark
The search process should be a priority before applying for trademark registration in order to ensure that the selected marks are not identical (no infringement) to the mark which has already been registered.
You can do it yourself or hire the service of an IPR agent, or it can also be done through the office of IPRs in the designated country (some are free of charge or have to pay) or through a database of trademark operated commercially.
How long does it take to register a trademark?
The time required to register a trademark vary widely from country to country, generally ranging from 3 months to 2 years, depending on whether the IPR offices in the designated country conduct substantive examination.
Elimination of Registered Trademark
Registered marks can be eliminated due to the following 4 (four) possibilities:
- On the initiative of Directorate General of IPR;
- On the request of the owner of the mark concerned;
- The court’s decision based on a lawsuit deletion;
- Not extending the period of registration of its mark.
The reason for the elimination of registration of the mark, namely:
- If for 3 consecutive years from the date of filing or the last usage, the marks have not been used in the trade of goods and / or services.
Exception if there is reason to be accepted by Directorate General of IPR, such as: the import ban, the prohibition relating to permits for circulation of goods that use of the mark concerned or the decision of the authorities that are temporary, or other similar prohibitions stipulated by government regulation;
- Mark used for the type of goods / or services that are not in accordance with the type of goods and / or services applied for registration, including the use of a mark that does not comply with the registration.
Cancellation of Registered Trademark
Registered marks can be cancelled by a court decision that desultory commercial law remains on the lawsuit parties concerned with the reasons under section 4, article 5 and article 6 of the Trademark Law.
PROCESS FOR MARK REGISTRATION
Application for registration of Trademark
- The trademark registration application is filed by filling out the form provided for that. Forms are written in Indonesian language and typed in 4 (four) copies.
- The applicant must attach:
- Affidavit which is sufficiently duty stamped on paper signed by applicant (not the attorney), which states that it is his trademark being applied for;
- The special power of attorney, if the application for registration is filed by the attorney;
- The official copy of the certificate of incorporation or copies certified by a notary, if the applicant is a legal entity;
- 24-sheet label of marks (4 sheets attached to the form) that is printed on paper;
- Photocopy of the applicant’s identity card; proof of the original priorities and its translation into Indonesian, when used with the right of priority; and
- Proof of payment of application fee.