Every business wants its brand to be recognized and valued by consumers. A brand is not just about a logo or name, but also about what makes a business special and different from others.
Therefore, protecting a brand is an important way to ensure that others do not use or imitate the brand without permission.
The process to protect a brand is called “brand registration”. It is the first step to be taken to ensure that the mark is legally protected.
However, the process is not as simple as submitting a form and waiting for approval. There are flows and statuses in trademark registration that need to be noted and understood, as these will affect the next steps to be taken.
Therefore, in this article, we will discuss the steps and status in the trademark registration process. Each flow and process has its own meaning and implications that need to be known. Check out the article till the end!
Overview of Trademarks and Their Registration
By definition, a brand is a sign that can be displayed graphically in the form of images, logos, names, words, letters, numbers, color arrangements, in 2-dimensional and / or 3-dimensional form, sound, holograms.
Trademarks can also be a combination of 2 or more of these elements to distinguish goods and/or services produced by persons or legal entities in the trading activities of goods and/or services.
Registered trademarks get legal protection for a period of 10 years from the date of receipt of the application for registration of the trademark concerned and the period of protection can be extended.
The trademark registration serves as:
- Evidence for the rightful owner of the registered mark;
- Grounds for refusal of the same mark in its entirety or substantially the same which is applied for registration by another person for similar goods/services;
- The basis for preventing others from using the same mark in its entirety or substantially the same in circulation for similar goods/services.
What is Brand Status?
The status of a mark is the official state of the mark in the registration system. This status indicates whether the mark is already registered, is in the process of registration, or is facing legal issues. Each status has a different meaning for the protection and rights of the mark.
The status of a mark provides information about the process of registering a mark and the actions that need to be taken by the owner.
There are three categories of trademark registration status. Each of these categories has important implications for the continuation of the trademark registration. Here is the explanation:
- Category 1
A status that indicates the brand has passed to the next stage of inspection, with no additional action required. The owner only has to wait for the inspection results.
- Category 2
A status that requires follow-up from the mark owner due to the condition of the mark. The next step taken will determine the future and protection of the mark.
- Category 3
A status that indicates the need for re-registration. This status is the most avoided by brand owners.
Status of Brands that Passed to the Next Stage
In the trademark registration process, there are statuses that indicate that the trademark has made it through the initial stages without any problems. However, if the mark shows one of the statuses in this category, you should not breathe a sigh of relief just yet. Because here there will be two possibilities that can happen.
First, your brand safely passes all the vetting processes. Or else the entry becomes problematic and ends up being rejected. Practically, the owner can see that the status is “in process”.
There are various types of statuses that can be found in this category, namely:
- Technical services
- Application submission
- Formality check
- BRM announcement period
- Substantive examination 1
- Substantive examination 2
- Substantive examination by the Head of Sub-Directorate
- Director’s approval to be given
- To be on the list
- Registered
Status of Brands that Need Follow-Up
Entering the second category, are brands that require follow-up from the owner. What is meant by follow-up here is in accordance with the request from the Directorate General of IP. for example, when you see the status “in process” under the brand name, but there is a message that includes the following:
- Waiting for a formality response
- Awaiting substantive response
- Awaiting substantive response to the motion to reject
If the owner encounters a status message like this, then the success of the trademark registration will largely depend on the response submitted to the DG IP. remember that a small mistake at this stage could result in the rejection of the trademark.
Rejection Brand Status
This is the status most avoided by brand owners, which ultimately necessitates re-registration. The types of statuses that indicate refusal include:
- Rejected
- Rejected based on responses
- Rejected due to opposition
- Rejected due to no response
If the mark shows any of the above statuses, the owner can only re-register. While it is possible to defend a trademark by appealing to the DG IP, dealing with the trademark owner can be a difficult task.
It is important to remember that in order to avoid rejection, it is advisable to keep the brand name distinct from existing brands. Meanwhile, the judgment regarding how strong the brand difference is will be the responsibility of the DG IP examiner.
Stages in the Trademark Registration Process
In the process of applying for trademark registration, there are several stages that can be a guideline to see the extent of the progress of trademark registration. These stages are as follows:
- Initial Stage of Application
At this initial stage, there are a series of statuses that a trademark applicant must face. These states include Technical Services and Formalities Examination. After passing these two statuses, there are several possible developmental stages that can be faced by each application.
- (TM) Technical Services
Technical service is a term used by the DG IP to describe the queue of trademark services. This status is not only limited to the initial stage of the application, but can appear at various stages as long as the trademark has not yet been certified.
Until such time as the brand does not hold a certificate, keep in mind that the safety of the brand is not fully guaranteed.
- (TM) Formalities Check
Formality examination is the process of initial checking of the requirements submitted by the applicant when applying for trademark registration. At this stage, if the examiner finds document deficiencies, the applicant will receive a request letter to complete the missing documents.
- (TM) Incomplete Formalities Check
If there are still incomplete documents after the applicant has completed the requirements, DG IP may display a status like this. However, the applicant does not need to worry because there is still an opportunity to complete the missing documents.
The documents should be completed immediately so that the Directorate General of IP does not cancel the trademark registration application.
- (TM) Waiting for response Formalities
This status does not always appear, and only occurs when the applicant does not immediately complete the complete documents as requested. If you find that the proposed trademark has this status, it is important to immediately complete the documents requested by the Directorate General of IP.
- (TM) Deemed Recalled
This status will appear if the applicant does not respond or does not complete the documents requested by the DG IP. When the trademark owner does not submit the response or the requested documents, the trademark registration application will be considered withdrawn.
- Examination Stage
This stage determines whether the trademark will be issued a certificate or will instead be rejected. The considerations used by the examiner refer to the provisions in the Trademark Act. There are several statuses that may be encountered when entering this examination stage, namely:
- (TM) In Process
After the brand owner gets a permanent refusal letter, the Directorate General of IP often provides an opportunity to defend the brand through the appeal route.
This status indicates that the brand examination process is ongoing. This status can appear at various phases, from the initial examination to the final assessment phase.
- (TM) BRM Announcement Period
After fulfilling all the preliminary requirements, the mark will be announced by the Directorate General of IP to let the public know about the registration of the new mark. The trademark owner should be prepared in case there is an objection from the owner of the pre-existing trademark.
- (TM) Completed Announcement Period
This status comes after an announcement period of about 3 months has ended, signaling that the objection filing period has been closed by the DG IP, which will then review all objections filed.
- (TM) Substantive Examination 1
Taking into account the objections raised, further examination will be conducted based on these objections and the Trademark Law. At this stage, there is no decision on refusal or approval.
- (TM) Awaiting Substantive Response
This status appears when brand owners are asked to provide additional confirmation or explanation, which is usually communicated through their email or brand account.
- (TM) Awaiting Substantive Response to Rejection Proposal
Similar to the previous status, but specifically for cases where there has been a suggestion of rejection, either from other parties or from the Directorate General of IP’s internal examination.
- (TM) Substantive Examination After Proposed Rejection
After receiving a response from the brand owner, the DG IP will assess both the proposed refusal and the response to determine the next step.
- (TM) Response Accepted
If the response submitted by the brand owner satisfies the examiner, the next status indicates that the brand can proceed with the examination process after overcoming the proposed refusal.
- (TM) Rejected Based on Feedback
If the examiner is not convinced by the arguments presented, this status signals a refusal, forcing the brand owner to convince the examiner again or re-apply under a different mark.
- (TM) Approval by Director for Rejection Based on Response
This status arises when the submitted response is not considered strong enough by the Director of Trademarks to maintain the registration of the mark.
- (TM) Approval by Director for Rejection Based on Opposition
It arises when there is a strong objection from another party against the registration of a mark, which is considered valid enough for refusal by the Director of Trademarks.
- (TM) Approval by Director for Rejection Due to No Response
This happens when the Director of Trademarks considers refusing registration due to the absence of a response from the trademark owner.
- (TM) Rejected Due to No Response
This final status signifies refusal as there is no attempt from the mark owner to provide a response that can sustain the registration of their mark.
- (TM) Granting the Appeal Petition
This status indicates that the appeal filed is in the process of evaluation by the Directorate General of IP.
- (TM) Examination of Brand Appeal Formalities
At this stage, the brand owner is required to submit certain documents as part of the appeal process. This status indicates that the documents are under review.
- (TM) Inadmissible Appeal Lacking Eligibility
If the submitted documents do not meet the requirements, this status will be given, indicating that the appeal is incomplete.
- (TM) Appeal Not Admissible
This status is given if there are other reasons, other than incomplete documents, that make the appeal inadmissible.
- (TM) Substantive Examination 2
This is the last substantive examination stage, where the mark has a high chance of being accepted by the DG IP.
- (TM) Inspection by Sub-Directorate
This status signifies that the mark is being examined by the Head of Sub-Directorate, indicating a high probability of issuance of a mark certificate.
- (TM) Director’s Approval To Be Given
At this stage, the approval of the Director of Trademarks is being sought to issue a trademark certificate, signifying that all processes have been passed without any issues.
- (TM) Approval by Director for Partial Listing Upon Receipt of Response
Although a response has been submitted, sometimes the DG IP only approves the protection of part of the mark, with the other part possibly being rejected.
- (TM) Approval by Director for Full Listing Upon Receipt of Response
This status indicates that the mark owner has successfully convinced the examiner to grant full protection to the previously problematic mark.
- (TM) Approval By Director To Be Registered Because Opposition Not Received
If the brand had a rejection proposal from another party but the proposal was rejected by the examiner, this status will be given.
- Certificate Issuance Stage
The long-awaited moment is now approaching. At this stage, the Directorate General of IP will finalize the brand certificate and then hand it over to the owners through their brand accounts.
- (TM) To Be Registered
The process of preparing a brand certificate does take a little time. However, there is no need to worry, as in the near future, owners will be able to print their own brand certificates.
- (TM) Registered
This is the time to check the mail inbox of the brand account. There, the certificate document from DG IP will be available. If there are inaccurate details, the next process is to file for further examination.
Status of Canceled, Removed, and Recalled Trademarks
Registering a trademark is not just a matter of luck, but also requires a good understanding of the process, including understanding what is the status of canceled, deleted, and recalled marks.
- (TM) Canceled
This status means that there was someone who disagreed with the registration of the mark and successfully canceled it through the courts. This happens because there is an objection from another party against the mark.
- (TM) Deleted
Unlike being canceled, which occurs due to a request from someone else, deletion can occur because the owner himself requests it. It can also be due to a request from another person or even a decision from the minister.
- (TM) Recalled
This status arises if the trademark owner fails to include the required documents during registration. The owner can submit the missing documents before the prescribed deadline of 30 days. If it passes, the mark may get a “withdrawn” status as it is deemed to be no longer interested in the registration.
KH Contact
From the explanation above, it can be concluded that the flow and status in trademark registration can be complicated, especially for MSMEs and novice businessmen who are applying for trademark registration for the first time and may not be familiar with the relevant laws.
However, it is important to remember that brand owners do not necessarily have to go through every stage to get a brand registered. The good news is that this process can be shortened provided there are no issues with your brand.
Therefore, to make it easier, you can contact Kontrak Hukum. We provide legal consulting services that can help brand registration quickly, easily, and safely.
Our team of experts will conduct a brand analysis in advance to minimize the possibility of rejection, and carry out the registration process with the help of IP experts who are officially registered with the Directorate General of IP.
Let’s make your trademark registration easier by visiting the page
KH Services – Trademark Registration
. If you still have questions, feel free to get a free consultation at
Ask KH
or send a direct message (DM) to Instagram @kontrakhukum.
