There is always an opposition camp in any case, including in brand issues. In 2017, Lexus of Toyota Motor Corporation filed a lawsuit at the Central Jakarta District Court against ProLexus, a local company. Lexus requested that the registration of the brand carried out by ProLexus be canceled because it was considered not to be in good faith, namely using the name ProLexus to overlap the name with a well-known brand. Lexus was also concerned that the public would be fooled into thinking that Lexus and ProLexus were related. However, the panel of judges ruled in favor of ProLexus because the lawsuit filed by Lexus had expired. The reason is that the lawsuit was filed by Lexus as a car brand holder on December 3, 2013, while ProLexus as a shoe or sandal brand holder has been registered since September 29, 2000.
First to Use and First to File
In trademark registration, there are two very important principles, namely first to use and second to use. first to file. First to use first to file means that whoever uses a trademark first, he is the one who is considered entitled by law to the trademark concerned. While first to file is whoever registers the mark first, then he is the holder of the mark, as long as it has not been proven otherwise within a certain deadline. The possibility of a trademark to be registered with another person’s trademark is indeed quite large so that Law Number 20 Year 2016 on Trademarks and Geographical Indications (Trademark Law) makes a regulation that every person has the right to apply for a trademark objection to the registration of another person’s trademark. When a person registers his/her trademark, the Directorate General of Intellectual Property (DJKI) will announce the trademark registration application through the Official Gazette of Trademarks within 15 days from the date of receipt of the registration application. The announcement of the application lasts for 2 months through electronic or non-electronic means. Now, during these 2 months, anyone can file an objection in writing to the DGKI on the application for registration of the trademark (Article 16 of the Trademark Law). The submission of the objection request must also be accompanied by evidence that the trademark applied for registration is a trademark that cannot be registered or rejected. The criteria for trademarks that cannot be registered are listed in Article 20 of the Trademark Law, while the criteria for trademarks that must be rejected are contained in Article 21 of the Trademark Law. Within a maximum period of 2 weeks, a copy of the objection letter is sent to the applicant of the trademark registrant or his attorney. The applicant or its attorney may file a written rebuttal to the DGKI no later than 2 months from the date of delivery of the copy of the objection. With the trademark objection and the existence of the rebuttal, DJKI will conduct a substantive examination whose results will be taken into consideration in deciding whether the trademark can be registered or rejected. If the trademark can be registered, then the DJKI will:
- Registering the mark;
- Notify the applicant or his attorney of the registration of the mark;
- Issuing a trademark certificate; and
- Announcing the registration of the mark in the Official Gazette of Trademarks, both electronic and non-electronic
If the substantive examination decides that the application cannot be registered or is rejected, the DJKI notifies the applicant or his attorney in writing by stating the reasons.
Tips for Avoiding Objection Requests from Registered Trademarks
To avoid the objection of the registered trademark, there are several ways that can be done. First, understand the business activities carried out, whether engaged in goods or services. This is because trademarks are classified into classes of goods and classes of services. Second, to find out whether the trademark has been registered, a search can be made in advance in the Intellectual Property Database owned by the Director General of Rights and Intellectual Property. Third, directly register the trademark. The purpose of this registration is so that the trademark is not imitated by other parties and become the legitimate holder of the trademark according to the principle of first to file. Fourth, conduct monitoring in the business world with the aim that if a trademark plagiarism is found, it immediately knows what steps to take. Read also: Trademark Registration Application Procedure
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The above provisions must be understood by business actors. So, businesses can avoid the occurrence of trademark disputes that take time and budget. Business activities will also run optimally and without constraints. KH friends want to consult about trademarks? Contact Kontrak Hukum, we are ready to help and provide the best solution. Visit and contact:
