Learn from VINDES, This is Why Trademark Registration is Rejected!

Who doesn’t know two famous presenters, Vincent Rompies and Desta? Now, they have a company whose name comes from a combination of their names, namely VINDES. VINDES itself is engaged in the creative industry or precisely digital media for young people who want to express their creative work through art and music. Not only that, some time ago they also held a tennis match event VINDES Sport “Tiba Tiba Tenis”, which managed to attract the attention of 12 million viewers. But in fact, the registration of the “VINDES Sport” trademark at the DJKI Kemenkumham did not run smoothly like the previous “VINDES” trademark because the registration status is still in the form of “Awaiting Examination Response to Proposed Refusal”. How come? Why can a trademark registration be rejected? Instead of being curious, let’s see the full explanation below.

Definition of Brand

Reporting from the official website of the DJKI, a brand is a sign that can be displayed graphically in the form of images, logos, names, words, letters, numbers, color arrangements, in two-dimensional and / or three-dimensional form, sound, holograms, or a combination of two or more of these elements. As is well known, a brand is an identifying mark for a product. Through brands, people will more easily recognize a product from many products in the same category. In addition to being an identifying mark, a brand can also be an attraction and promotional tool to the public so that promoting its products is enough to mention the brand. For this reason, before providing and registering a brand for products and/or services, it is necessary to do research first. After finding the right name and ensuring that no one has used the name, then you can directly register the brand to the DJKI Kemenkumham.

Substantive Examination in Trademark Registration

According to Article 23 of Law No. 20/2016 on Trademark (Trademark Law), substantive examination is an examination conducted by the examiner on the application for trademark registration. Substantive examination is conducted after the announcement of trademark registration, where the trademark is announced openly to the public. The purpose of this announcement is to provide an opportunity to the public or registered trademark owners who may have similarities to provide objections or memorandum of objections related to the trademark registration. According to Articles 23 and 24 of the Trademark Law, substantive examination is used to examine the substance of the mark against:

1. Compliance of the proposed mark with one or more criteria of an unregistered mark; and/or
2. The possibility of substantial similarity either in whole or in certain aspects with other registered marks or marks that have a level of popularity.

What are the Reasons for Refusal of Trademark Registration?

As experienced by VINDES against the “VINDES Sport” trademark, in fact, the trademark registration process may experience rejection. Where at the time of the trademark application, the trademark examiner will conduct a re-examination to validate the registered trademarks. In accordance with Article 21 of the Trademark Law, an application for trademark registration can be refused if it has the following criteria:

1. Has a resemblance or similarity to:
   • State symbols or emblems that are protected by law, eg: Garuda Pancasila;
   • The brand is well-known or has been registered before;
   • Geographical indications that are protected and used for identical or similar products, so as to create the impression that the product comes from the region associated with the geographical indication;
   • A well-known trademark that has not been registered in Indonesia, so that it can cause harm to the owner of the well-known trademark.
2. Resembling the name or abbreviation of the name of a famous person, photograph, or the name of a legal entity owned by another person, except with the written consent of the rightful owner.
3. Is an imitation of the name or abbreviation of the name, flag, emblem or symbol or emblem of a country, or national or international institution, except with the written consent of the authorized party.
4. 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.
5. The applicant did not act in good faith during the trademark registration application process.

Criteria for Unregistrable Marks

In addition to refusal, the Trademark Law also regulates the reasons why a trademark cannot be registered according to Article 20, including:

1. Contrary to state ideology, laws and regulations, morality, religion, decency, or public order;
2. Similar to, related to, or merely mentioning the goods/and or services for which registration is sought;
3. 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;
4. Containing information that is not in accordance with the quality, benefits, or efficacy of the goods and/or services produced;
5. Does not have differentiating power; and/or
6. Is a public name and/or symbol of public property.

What Can Be Done When a Trademark Registration is Refused?

There is no need to worry if the applicant receives a refusal proposal at the substantive examination stage such as the VINDES trademark case. This is because, the applicant has the opportunity to file an appeal within a maximum period of 90 days from the date of delivery of the notice of rejection of the application. At this time, the applicant can submit a rebuttal or argument that the mark applied for is original to the applicant. This request is submitted in writing to the Trademark Appeal Commission with a copy submitted to the MOLHR. The appeal process for refusal of trademark registration is usually charged according to the existing provisions. After that, the Trademark Appeal Commission will give a decision within a maximum of three months since the appeal is received. If the appeal is granted, the trademark certificate will be issued.

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However, if the Trademark Appeal Commission refuses, the applicant can file a lawsuit against the decision to the Commercial Court within a maximum period of three months. If the Commercial Court again rejects the lawsuit, then the applicant can file a cassation.

KH Contact

Thus the explanation of the proposed registration of the VINDES trademark, including what are the reasons that cause a trademark registration cannot be done and rejected. Still confused about the right trademark criteria? Let’s do a trademark analysis at Kontrak Hukum! We provide trademark analysis services carried out by a team of expert Legal Contract consultants who are experienced and officially registered at the DJKI, so there is no need to worry that your trademark will be rejected. After analyzing, KH Pals can also simultaneously enjoy brand registration services with Kontrak Hukum easily and quickly.

What are you waiting for? Let’s make your trademark registration process easier by visiting this page. If you have any questions about trademarks or other Intellectual Property, don’t hesitate to contact us at Tanya KH or via direct message (DM) to Instagram @kontrakhukum.