Recently, Susilo Bambang Yudhoyono, the former president of Indonesia who now serves as the Chairman of the Democratic Party’s High Council, filed an application for the Democratic Party’s trademark on behalf of himself through the Directorate General of Intellectual Property (DJKI). Although the application for registration of the name and symbol of the Democratic Party has been revoked by SBY, the application for the brand has caused quite a controversy. This is because the name of the Democratic Party and the logo used now were registered in 2007 on behalf of the party. Freddy Harris, Director General of IPR, stated that trademark applications can indeed be made by anyone and SBY has the right to apply for the Democratic Party trademark on his behalf. However, because the name of the Democratic Party has already been registered at the Ministry of Law and Human Rights and the logo to be registered has overall similarities with the registered one, Freddy said that the application is likely to be rejected. In the rules regarding trademarks, there are several reasons why a trademark application should be rejected. What are these reasons? Contract Law will answer below.
Reasons why a trademark registration is rejected
According to Permenkumham No. 12 of 2021, an application for trademark registration may be rejected by the minister in the event that the trademark applied for is substantially or wholly similar to:
- Registered trademarks owned by other parties or which have been applied for in advance by other parties for similar goods and/or services.
- A well-known trademark owned by another party for similar goods and/or services.
- A well-known trademark owned by another party for non-similar goods and/or services that meet certain requirements.
- Registered geographical indication.
An application for registration of a mark may also be refused by the minister if the mark is :
- Represents or resembles the name or abbreviation of a famous person, photograph, or the name of a legal entity owned by another person, unless there is written consent from the rightful owner.
- Is a copy or resembles the name or abbreviation of the name, flag, emblem or symbol or emblem of a country, or national or international institution, unless done with the written consent of the authorized party.
- Represents or resembles an official mark or seal used by the state or a Government agency, except with the written consent of the authorized party.
- Filed by an applicant with bad faith.
Read also: Unilever Brand Dispute with Parents, Why Register a Brand?
In addition to the reasons for refusal of a trademark registration application above, a trademark also cannot be registered if the trademark:
- Contrary to state ideology, laws and regulations, morality, religion, decency, or public order.
- Similar to, related to, or merely mentioning the goods and/or services for which registration is sought.
- Contains elements that can mislead the public about the origin, quality, type, size, variety, purpose of use of the goods and/or services for which registration is requested or is the name of a protected plant variety for similar goods and/or services.
- Containing information that is not in accordance with the quality, benefits, or efficacy of the goods and/or services produced.
- Does not have differentiating power.
- Is a public name and/or symbol of public property.
- Contains forms that are functional.
In the case of the application for the Democratic Party trademark by SBY, the application can be rejected and should not even be registered. This is because the Democratic Party trademark registered by SBY does not have distinguishing power or has overall similarities with the name and logo that have been registered earlier on behalf of the party.
First-to-File
Trademark law in Indonesia adheres to the principle called first to file where anyone who registers first and the application is granted will obtain rights to the registered trademark. So that the exclusive rights to the Democratic Party’s trademark should indeed belong to the party as a party that has applied for registration and received the application first.
KH Contact
Well Friend KH that’s an explanation of what are the things that make the trademark registration application that we do can be rejected. If you want to register a trademark / service, don’t forget to check the trademark first so that the application is not rejected and avoid disputes over the trademark in the future, Kontrak Hukum can also help you check and register your trademark. KH pals do not need to worry about using the trademark checking and registration services at Kontrak Hukum because Kontrak Hukum has been trusted in solving legal problems. KH Friend can directly visit the Brand Checking page. If you have any questions about Trademark, Intellectual Property Rights in Indonesia, or want to consult regarding other legal issues, you can contact Kontrak Hukum at the Ask KH link!
