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The world famous soccer club, Manchester United (MU) recently received an award, but not from football but because of intellectual property. In May 2023, MU was named Champion of Brand Protection 2023 from the World Trademark Review (WTR). WTR itself is an organization for global news, analysis and data on trademark management. MU received the award for being the football club that registered the most brands in the world. It is known that the English football club has stepped more than 2000 times to register its trademarks, including names and logos in a number of countries around the world. These efforts include registrations for various brand elements, such as team names, logos, and combinations of names and logos. Everything from the “Red Devils” brand logo to the nickname of their stadium, the “Theater Of Dreams”, has been registered as a trademark by MU. In fact, the impact of these steps is felt in Indonesia, where MU has registered 35 trademarks consisting of various variants of names, logos, and combinations of both. Now it is known, MU registers its trademarks not only in one or two trademark classes, but up to 16 trademark classes at once. Where based on monitoring of Intellectual Property Data Base (PDKI) data, MU registers trademarks in classes 3, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 28, 36, 38, 41, 43. How come? How can a trademark be registered in multiple trademark classes? Check out the further explanation here.

Registering a Trademark in Multiple Classes

In an era of globalization where information and products can easily spread across national boundaries, protecting trademarks has become increasingly important for large companies and organizations such as MU. Trademark registration is actually the most essential thing to protect a brand. As stated in Law No. 20 Year 2016 on Trademarks and Geographical Indications, the first principle that is emphasized is that the state gives priority to brand protection to brands that are registered first. Trademark registration is currently done to the Directorate General of Intellectual Property (DJKI) of the Ministry of Law and Human Rights. As explained earlier, MU has registered 35 of its trademarks in Indonesia in several trademark classes. As a reminder, a brand class is a grouping of a field of business carried out by a brand and acts as a limitation of rights to the use of a brand. This provision is regulated in Government Regulation No. 24/1993 on the Class of Goods or Services for Trademark Registration. Based on PP No. 24/1993, there are 45 different classes of goods and services, namely:

Item Class

  1. Grades 1-5: Chemistry and chemical products
  2. Grades 6-14: Metals and metal products
  3. Grades 15-21: Technology products
  4. Classes 22-27: Textiles and related goods
  5. Class 28: Adult toys, sports and games
  6. Classes 29-34: Food, beverages and tobacco products

Service Class

  1. Class 35: Advertising, business management, and administration
  2. Class 36: Insurance, finance and real estate
  3. Class 38: Telecommunications
  4. Class 39: Transportation and travel
  5. Class 40: Material handling
  6. Class 41: Education, entertainment, sports and arts
  7. Class 42: Research and technology
  8. Class 43: Food and beverages
  9. Class 44: Health and medical
  10. Class 45: Law and security

In the trademark registration process, the applicant will be required to determine the trademark class that will be used for the trademark. In this case, the trademark owner can actually register his trademark in several trademark classes. For example, imagine a brand owner who produces organic food and beverage products. In this case, the brand owner can consider registering his mark in several relevant classes, such as:

  1. Class 29 (Food): For organic food products, such as organic cereals, organic milk, or organic canned food.
  2. Class 30 (Beverages): For organic beverages, such as organic herbal tea or organic coffee.
  3. Class 32 (Non-alcoholic Beverages): For organic soft drinks, such as organic fruit drinks.
  4. Class 44 (Health and Medical): If the mark is also used in the context of health products or organic food supplements.

By registering marks in several appropriate classes, brand owners can protect their exclusive rights against the use of similar or identical marks in different categories of products or services. This provides broader and stronger protection to their marks and allows them to control the use of such marks in various aspects of their business. Thus, proper selection of the brand class is a strategic step in maximizing trademark protection.

What if you want to register a trademark in another country?

Currently, brand owners in Indonesia can easily register their brands in other countries. This mechanism is done through the Madrid Protocol. With this, entrepreneurs can register their trademarks in more than 100 countries that are members of the Madrid Protocol. Before deciding to register a trademark in another country that is a member of the Madrid Protocol, the trademark owner needs to fulfill several requirements first, including:

Conducting Brand Inspection

Trademark owners need to check carefully to ensure that the trademark to be registered does not violate the applicable regulations in Law No. 20 Year 2016.

Brand Resemblance or Similarity

As an illustration, if a business actor plans to register “Coffee Delight” for coffee products, then it must check whether there are similar brands such as “Cafe Delicious” or “Delightful Coffee” that have already been registered.

Brand Classification

Ensure that the trademark to be registered falls within the appropriate classification and does not overlap with other trademarks already registered in similar categories. For example, if a business wants to register the mark “Aqua Wave” for body care products, check whether there are similar marks that have been registered in the same category.

Brand Status

Verify that the mark to be registered is not in a legal dispute or in the process of being canceled. For example, if the owner of the brand “Eco Friendly” wishes to register the brand, ensure that it is not currently involved in a legal dispute regarding a similar brand.

Protection Status

Ensure that the trademark to be registered does not have a valid protection status. For example, if the business plans to register the brand “Bio Innovate” for environmentally friendly technology products and there is already a similar brand, make sure that the brand no longer has valid protection.

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The next step is to apply for trademark registration in Indonesia through the DJKI of the Ministry of Law and Human Rights. The applicant can fulfill further administrative requirements and technical procedures by looking at the provisions on the platform as well as at Law No. 20/2016.

KH Contact

From the explanation above, it can be concluded that MU football club puts a lot of effort in protecting and managing its trademarks around the world. This shows MU’s commitment in protecting its brand identity and avoiding potential unauthorized use or counterfeiting. This step can also be an example for businesses or companies in Indonesia to be able to have the same strength in brand protection as the MU logo and brand. Well, for KH Pals who are currently running a business or company and need to take care of their trademark, you can contact Kontrak Hukum. We can help you to register a trademark easily and safely because of the process of analyzing the trademark first together with an IP consultant who is registered with the DJKI Kemenkumham. For ordering information, visit the KH Services – Trademark page. If you have questions about other business needs, you can also get a free consultation through Tanya KH and send a direct message (DM) to Instagram @kontrakhukum.

Mariska

Resident legal marketer and blog writer, passionate about helping SME to grow and contribute to the greater economy.

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