A TRADEMARK CANNOT BE REGISTERED BASED ON THE TRADEMARK AND GEOGRAPHICAL INDICATION LAW CORRELATED TO OTHER LAWS
A trademark application cannot be registered due to many reasons, i.e. if the said application contradicts with the Trademark and Geographical Indication Law No. 20 of 2016 (hereinafter referred to as “UUM and IG”), specifically to the Article 20 letter c which asserts “A Mark cannot be Registered if contains elements that may mislead the society on the nature, quality, type, measurement, category, purpose of the usage of goods and/or services applied for registration or it is a name of protected plant variety for similar goods and/or services”
In the elucidation, what is meant by publishing not appropriate information about quality, advantage or savor of the produced goods and/or services is giving not accurate information about quality, advantage, savor, and/or risk of the products.
Basically, the said stipulation has been previously regulated by the Government through the Indonesian Government Regulation No. 109 of 2012 on Safeguarding Materials Containing Addictive Substances in the Form of Tobacco Products for Health as stated in Article 24 particularly in paragraphs 1 and 2, namely :
- Every producer is prohibited to give information or any misleading signs or promoting words.
- Besides the above mentioned prohibition in paragraph (1), every producer is prohibited to state the word “Light”, “Ultra Light”, Mild, “Extra Mild”, “Low Tar”, Slim, “Special, “Full Flavors”, “Premium”, or any words which indicate quality, superiority, safety, personality, or any words in similar meaning.
Therefore, a trademark application under the kind of goods of tobacco products/cigarette which is included in class 34, cannot be accepted by the Directorate of Trademark, Directorate General of Intellectual Property, if there are element words of “Light”, “Ultra Light”, “Mild”, “Extra Mild”, “Low Tar”, “Slim”, “Special”, “Full Flavour”, “Premium” on the trademark or other words indicate quality or any words in similar meaning.
However, factually in open market or in General Trademark Registry of Directorate of Trademark for a long time there are many registered tobacco products/cigarettes have been circulating by stating the forbidden element words as mentioned above. The polemic is, How it can be happened?
To answer this polemic, we have to refer to the provision of Article 24 paragraph 3 of the Government Regulation which states “The provisions referred to in paragraph (2) is not applied for the tobacco products which are already having trademark certificate in accordance to the law”.
Therefore, tobacco products/cigarettes which already have trademark registration certificate issued by the Directorate of Trademark. Directorate General of Intellectual Property, will keep allowing the trademark to be marketed as long as the trademark is still under protection period for having exclusive right as asserted the Article 1 point 7 of UUM and IG, “Right upon Geographical Indication shall mean an exclusive right granted by the state to the holder of registered Geographical Indication right, provided that the reputation, quality, and characteristics that form as the ground of the granting of such Geographical Indication protection are still existing”.
In case a trademark application for tobacco products/cigarettes is having the aforementioned word elements, and filed after the enactment of the Indonesian Government Regulation No. 109 of 102 regarding Safeguarding Materials Containing Addictive Substances in the Form of Tobacco Products for Health on 24 December 2012, the Directorate of Trademark, the Directorate General of Intellectual Property will reject the said trademark application on the basis of the Article 20 Letter c of UUM and IG juncto Article 24 Paragraphs 1 and 2 of the Government Regulation No. 109 of 2012.
Besides the above explained matters, a trademark application also cannot be registered if it contradicts to the Article 20 letter a of UUM and IG which asserts “A Mark cannot be Registered if in contradiction to the State’s ideology, the law and regulation, morality, religion, decency, or public order”.
In the elucidation, what is meant by contradicting with public order is not in line with existing comprehensive public regulation such as offending public or community feelings, offending public decency or ethics, and offending the peace of public or community.
In order to support the said provision, Government has issued regulation of National Food and Drug Agency No. 31 of 2018 regarding Processed Food Labels, (hereinafter referred to as “PerBPOM 31/2018”) specifically the Article 67 letter p stated that “An entrepreneur is prohibited to give a statement, information, wording, picture, logo, claim, and/or visualization as follows : statement causes illustration/perception which contradicts to morality, ethics, or public order”
If there is a party who filed the trademark application which is factually contradicting to the above mentioned regulations, the Directorate Trademark, Directorate General of Intellectual Property will be surely rejecting the said trademark application on the basis of the Article 20 letter a of UUM and IG as well as it will be also possible to use the Article 67 letter p PerBPOM 31/2018 as the basis of rejection.
Morality element, ethics or public order is having strong correlation with the regulations on the Pornography Law No. 40 of 2008 (hereinafter referred to as UUP) if the marketed trademark is contradicting with the provision in the Article 1 point 1 of UUP, which stated :
“Pornography is picture, sketch, illustration, photo, writing, voice, sound, moving picture, animation, dialogue, body movement, or another message form through another media communication and/or performance in the public which are having obscenity or sexual exploitation that infringes morality norm in the public”.
Further, how if there is a party who sells food and beverage products in factually infringing the provision of the Article 1 point 1 of UUP i.e. by naming their products with modifying the naming from the specified sex organ, It also can be categorized as an infringement of the provision of the Article 4 paragraph 1 of UUP, which asserts “Every person is prohibited from producing, creating, reproducing, reduplicating, distributing, announcing, importing, exporting, offering, trading, renting or providing pornography that explicitly contains:
- association, including deviant sexual relations;
b. sexual assault;
c. masturbating or masturbation;
d. nudity or an impressive display of nudity;
e. sex organ; or
f. child pornography”.
The consequences of this action are criminal sanctions, which have been clearly outlined in Article 29 of the UUP, namely “Every person who produces, creates, reproduces, reduplicates, distributes, imports, exports, offers, resells, rents out, or provides pornography. as referred to in Article 4 paragraph (1) shall be sentenced to a maximum imprisonment of 6 (six) months and a maximum of 12 (twelve) years and / or a minimum fine of Rp.250,000,000.00 (two hundred and fifty million rupiah) and a maximum of Rp.6,000,000,000.00 (six billion rupiah)“.
The above matters are only a few examples of the legislations which have a correlation with the UUM and IG. Basically, there are still many regulations which are having relation with UUM and IG because the Intellectual Property protection is very broad and almost exists in every element of human life.
After learning the above matter, it can be seen that it seems very easy to choose naming of the trademark for trading goods or services. However, factually there are other regulations which should be noticed besides UUM and IG before determining the trademark naming.
Thus, before filing the trademark application, it is highly suggested for having consultation with trusted Intellectual Property Consultant and having good credibility. Am Badar & Partners may be a reference for consulting and filing your Intellectual Property since we have experienced more than 50 years in handling our domestic or international Clients.
We would be grateful the aforementioned information will be useful for you. Should you have any inquiries regarding the information above or Intellectual Property matters (Trademark, Patent, Industrial Design, Copyright), please do not hesitate to visit or contact us. Our professional team will be very pleased to serve and have further discussion with you well.