What is a trademark?
From HAKItree
Previous page: Trademark law in Indonesia
A trademark is a sign, picture or a name that is used to identify a business or its products. The essential function of a trademark is to identify the commercial origin of goods and services. In other words, trademarks serve to identify a particular business as the source of goods or services. However, trademarks are also used to convey a certain image, quality or reputation to the consumer, to build a connection between the consumer and the business or its product.
A registered trademark is an exclusive right that is granted by the government to the owner of the trademark registration to use the trademark or to permit another person to use it (Article 3). The distinction is important in Indonesia because a trademark cannot be enforced in Indonesia unless it is also registered at the Indonesian Trademark Office.
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Legal definition
Under the Trademark Law, a trademark is defined as:
- a picture
- a name
- a word
- Ietters
- figures
- numerals
- a colour composition, or
- a combination of these elements,
which has distinguishing features and is used in trading in goods and services.
What cannot be registered as a trademark?
According to the Trademark Law, a trademark cannot be registered if:
- the person applying for the trademark registration does not have good faith (Article 4)
- the trademark is immoral, or conflicts with the law or public order (Article 5(a))
- the trademark is not distinctive, or in other words, it does not have any distinguishing characteristics (Article 5(b))
- the trademark has entered the public domain, or become generic (Article 5(c)), for example the scull and crossbones as a sign of danger
- the trademark describes the good or service (Article 5(d)), for example ‘fruit tea’ used by a beverage company as the name of its tea flavoured beverage.
The Trademark Office must reject a trademark application if the trademark is:
- is similar in principle or entirely with a trademark which is registered by other person, and is used in the same area of trade in goods or services (Article 6(1)(a))
- is similar in principle or entirely to a well-known trademark owned by another for the same good and/or service (Article 6(1)(b))
- is similar in principle or entirely to a geographic indication which is already well-known (Article 6(1)(c))
- resembles the name or image of a well-known person, state symbol or flag, official sign or stamp (Article 6(3)(a))
Bad Faith and the 'Good Faith' Requirement
Trademarks must be registered in good faith. If a person attempts to register someone else's trademarkor knowing that it is similar to someone else's, then that person cannot be said to have ‘good faith’ and the trademark will not be registrable. The good faith requirement also means that a trademark must be used or be intended to be used.
Some examples of bad faith are:
- if a person files a trademark application and that person does not really intend to use the trademark but does so to pre-empt anyone else from using the trademark
- if a person files an application for a trademark that is famous overseas, but is not yet registered in Indonesia.
A trademark must be distinctive
Trademark distinctiveness is an important concept in the Trademark Law. A trademark cannot be registered if it has no distinctive elements (Article 5(b)). The law requires that a trademark must be distinctive because registration amounts to granting a monopoly over a name or symbol (etc), preventing other people from using it. So the trademark must distinguish the goods or services from the goods and service of another trader in the same field of business.
The starting point for considering a trademark's distinctiveness is to compare it to other trademarks that are registered or applied for registration at the Trademark Office. If the trademark is similar to a trademark that is already registered or applied, then it will not be considered distinctive.
Can a trademark acquire distinctiveness? Sometimes a trademark that is not particularly distinctive (for example a mark that is 'merely descriptive') can be registered if it has been used for a substantial period and has become distinctive. The trademark may become well known through continued use, so that consumers may be able to distinguish it from other trademarks even though it is not particularly distinctive. These marks are registrable.
An example of acquired distinctiveness is the purple colour used for chocolate. While the colour itself it not distinctive, Cadbury’s use of the colour for over a hundred years has resulted in an association between the colour purple and Cadbury’s chocolate.
Descriptive marks
An important principle of trademark law is that trademarks must not be descriptive of the goods or services they are used for. For example the word “orange” cannot be registered as a trademark for fruit. However, ORANGE® is not descriptive of telephony services and therefore is distinctive in relation to those services.
Generic trademarks
Just as a descriptive word can acquire distinctiveness through continued use as a trademark, a trademark can also lose its distinctive character if it is continually used as a trademark. Sometimes a trademark that is not initially descriptive can become an industry term and thereby acquire a meaning which now makes it descriptive. This is what is meant by the term ‘generic’. Some examples of marks that may be considered generic are Velcro, Cellophane, nylon, Lycra, Kleenex and Jacuzzi.
Next page: Registering trademarks
See also
- Registering trademarks
- Transferring trademarks
- Licensing trademarks
- Removing a trademark from the Register
- Trademark infringement
- Passing off, unfair competition
Further references
External links
- Colors a Powerful But Sometimes Legally Defenseless Trademark, The Jakarta Globe, 1 December 2010
