A brand is one of the most valuable assets for a business. A strong brand can be the identity and determinant of the success of a brand and the products and/or services offered by the business. Well, to protect a brand, business people need to understand the concept of “first to file”, which is a basic principle in the legal protection of trademarks. Yes, KH pals have probably heard the term “first to file” in trademark registration, right? This system is a key pillar in the registration and protection of trademarks in Indonesia. Although this principle may sound simple, its impact is huge especially at the time of wanting to register a mark because it is to determine who is entitled to the mark. So, what exactly is meant by the “first to file” system? How does the system relate to trademark registration in Indonesia? So that you don’t misunderstand, check out the explanation in this article.
Brand at a glance
Based on Article 1 number 1 of the Trademark Law, a trademark is defined as a sign that is graphically displayed in the form of an image, logo, name, word, letter, number, color arrangement, in two-dimensional and/or three-dimensional form, sound, hologram, or a combination of two or more of these elements to distinguish goods and/or services produced by a person or legal entity in the trading activities of goods and/or services. In short, a trademark is a sign that is recognized by consumers as a mark on an item (Heri Firmansyah, in the book “Legal Protection of Trademarks”). Trademark becomes an identity that distinguishes one business from another. Trademark is also a symbol that allows consumers to recognize a product. Based on this understanding, it means that the brand has an important function in business. However, there are many businesses whose brands are copied by competitors. This can certainly be very detrimental. For this reason, the existence and also the form of communication on the brand become a determining factor in marketing a product of goods and/or services. Because of its important role, it becomes natural that the trademark must be protected through a legal entity with trademark rights instruments. As based on Article 1 number 5 of the Trademark Law, the trademark right itself is an exclusive right granted by the state to the owner of a registered trademark for a certain period of time by using the trademark itself or giving permission to other parties to use it. So that by having trademark rights, an individual or company has the freedom to use the trademark for commercial purposes, and also has the right to prohibit other parties from using the trademark for the class and type of products of similar goods and/or services.
What is “First to File” in Trademark Registration?
To have rights to a trademark, business people need to apply for official trademark registration to the Directorate General of Intellectual Property of the Ministry of Law and Human Rights (DJKI Kemenkumham) electronically or non-electronically. But what needs to be known is that the concept of trademark registration in Indonesia adheres to the principle of “first to file”, which means that if the application submitted has met the minimum requirements as stated in Article 13 of the Trademark Law, the applicant whose application is filed first and registered first, then that party is entitled to trademark protection. This is also in line with the registration of trademarks in Indonesia which adheres to the “Constitutive Stelsel”, namely the party who registered a trademark first is the only party entitled to the trademark and third parties must respect the rights of trademark registrants as an absolute right in the registration of a trademark (Sudaryat, in the book “Intellectual Property Rights”). This is a different approach to the first to use system, where trademark rights are granted to the party who first uses the mark in trade. The advantages of the enactment of the first to file trademark registration system, namely:
- In the event of a dispute, the registered trademark will be easier to prove.
- Registered trademarks already have authentic evidence, namely certificates obtained from the DJKI.
- Trademarks that have been submitted for registration to the DJKI will immediately receive legal protection even though the certificate has not been issued.
- Filing an application for trademark registration will receive priority and be recognized as a legitimate trademark owner.
First to File and the Importance of Brand Checking
Now KH Friend has known what is meant by first to file. Where this system has become the main foundation in protecting trademark rights in Indonesia. The basic principle behind this system is to grant exclusive rights to the party who first files the mark, even if they are not the first to use the mark in trade activities. Therefore, before you step up to apply for trademark registration with the DJKI Kemenkumham, it is important to conduct a trademark check. Now, you might be wondering, what are the benefits of brand checking and how does it relate to first to file? Here’s why brand checking before registering is so important:
- Knowing whether your brand can be registered or not.
- Avoiding rejection when applying for registration or lawsuits filed by other parties because of the similarity of trademarks that have been registered.
- Given the length of the trademark registration process, rather than you have registered but in fact the registered trademark has been registered by another party, it is better to check in advance so as not to waste time and money.
Because, if KH Friend still wants to use a brand that has been registered, get ready to bear the consequences. Where you can be sued by the legal owner of the brand with a fine of up to IDR 2 billion or a maximum criminal penalty of five years. This is in accordance with the provisions in Article 100 of the Trademark Law.
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That’s just the legal liability, not to mention the business and consumer perception issues. You could be hurting your own business reputation if consumers know that your brand is plagiarized.
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That is the explanation of the first to file system in trademark registration. Remember, to avoid refusal of registration from DJKI or business disputes, it is very mandatory for brand owners to check the brand first. Still having trouble with trademark checking? Kontrak Hukum is ready to help you. We provide a trademark analysis service that is done by comparing the trademark that you want to register with the registered trademark data in the Intellectual Property Database (PDKI). The trademark is analyzed by paying attention to the similarity of elements and also whether the trademark has been registered or not. That way, you can save the loss of cost and time if the trademark you have turns out to be unregistrable. In addition to trademark analysis, Kontrak Hukum also provides trademark registration services for only Rp2 million!
What are you waiting for? Let’s protect your brand rights safely and easily with us by visiting the KH Services – Brand page. If you still have questions, please consult at Ask KH or via direct message (DM) to Instagram @Kontrakhukum.
