Understand Substantive Examination, Essential for an Acceptable Trademark Listing

As we know, brands have a very important role in running a business. A brand is not just a visual identity or name attached to a product or company, but also has an important function in shaping the image and reputation of a business, as well as influencing consumer behavior. What needs to be remembered is that, in addition to being owned, brands must also be officially registered with the Directorate General of Intellectual Property (DJKI) of the Ministry of Law and Human Rights of the Republic of Indonesia. That way, business people have the freedom to use the brand for commercial purposes, and have the right to prohibit other parties from using the brand. But in applying for trademark registration, there will be many series of processes that must be taken by the business or applicant. One of the most important processes in applying for trademark registration is the substantive examination. You could say that this is the determination of whether the application for trademark registration is accepted or rejected. So, what is substantive examination? Before going further in trademark registration, it is better to understand the definition first.

What is Substantive Examination?

In accordance with Article 23 paragraph (1) of Law 20/2016 on Trademarks and Geographical Indications, the substantive examination is an examination conducted by the examiner on the application for trademark registration. The definition of examiner in question is a functional official, who because of his expertise is appointed and dismissed by the Minister of Law and Human Rights to conduct a substantive examination of the application for trademark registration.

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This substantive examination is conducted after the trademark application passes the formality examination and the trademark announcement period in the Trademark Official Gazette (BRM).

Stages in Substantive Examination

Quoted in the module “Intellectual Property in the Field of Trademarks and Geographical Indications” prepared by the DJKI of the Ministry of Law and Human Rights, this substantive examination process consists of several stages, which include:

Examination of applications for trademark registration

The application for trademark registration is examined based on the first to file system, which is an examination of the application for trademark registration filed first.

Examination of request for response

The examination stage of the proposed trademark registration application is rejected. This response request can only be submitted by the applicant or his attorney.

Examination of objection and/or rebuttal requests

The examination stage of the application for trademark registration which at the time of announcement received objections from other parties. If there is a request for objection from other parties, then the applicant has the right to file a rebuttal.

What are the Checks?

At this stage, the trademark examiner will examine whether the newly applied for mark is related:

Registering in bad faith

The trademark examiner will examine whether or not the applicant acted in bad faith when registering the trademark, by looking at:

• Imitating, plagiarizing, or following another party’s brand for the benefit of its business;
• Give rise to conditions of unfair business competition; and/or
• Deceive or mislead consumers.

Meet the criteria for unregistrable and/or rejected trademarks

Based on Article 20 of Law 20/2016, marks that cannot be registered are marks that have substance:

• 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; and/or
• Is a public name and/or symbol of public property.
• Does not fulfill the elements of a repudiable mark.

Meanwhile, a rejected mark under Article 21 of Law 20/2016 is a mark that has substance:

• The trademark is substantially or wholly identical
• Represents or resembles the name or abbreviation 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;
• Represents or resembles 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;
• Is an imitation or resembles a sign or stamp or official seal used by the state or government agencies, except with the written consent of the authorized party; or
• Filed by an applicant with bad faith.

Substantive Examination Decision

After going through the substantive examination stage, the examiner can make two decisions, namely:

1. Perform registration (Register); or
2. Reject the application for registration (Decline).

If the examiner decides that a trademark application can be registered, the Minister of Law and Human Rights will do the following:

1. Registering the mark;
2. Notify the applicant or his attorney of the registration of the mark;
3. Issuing a trademark certificate; and
4. Announcing the registration of the trademark in the Official Gazette of the Trademark, either electronically or non-electronically.

Meanwhile, if the examiner decides to refuse or not register the trademark application, the Minister of Law and Human Rights will:

1. The Minister of Law and Human Rights will notify the applicant or his/her proxy in writing stating the reasons;
2. Within a maximum period of 30 days, starting from the date of sending the notification letter, the applicant or his/her attorney may submit a response in writing stating the reasons.
3. If the applicant or their attorney does not submit a response, the Minister of Law and Human Rights rejects the application.
4. If the applicant or his attorney submits a response and the examiner decides that the response is acceptable, then the Minister of Law and Human Rights can carry out the registration process until the issuance of a trademark certificate.
5. In the event that the applicant or his/her proxy submits a response and the examiner decides that the response is unacceptable, the Minister of Law and Human Rights shall reject the application.
6. Such refusal shall be notified in writing to the applicant or his/her Proxy stating the reasons therefor.

This is the explanation of the substantive examination in trademark registration. In conclusion, make sure the registered trademark is your original work. So that the trademark registration process can run smoothly.

KH Contact

Friend KH wants to register a trademark, but is worried about being rejected when entering the substantive examination stage? Kontrak Hukum is ready to help!

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We can help you to register a business brand easily and safely because of the brand analysis process first with a competent IPR consultant and officially registered at the DJKI. For service booking information, please visit the KH Services – Trademark page. If you have questions about other business needs, do not hesitate to consult for free at Ask KH and send a direct message (DM) to Instagram @kontrakhukum.