Not All "Marks" Are Registrable 

“Analisa” Daily, July 2, 2007.

An article by Iman Sjahputra, SH, SpN, LL.M.

Among businessmen a mark is very familiar where the “mark” has its own meaning from the material’s substance. A mark is valuable, either materially or legally. Therefore it has its own regulation among the businessmen. A mark cannot be used haphazardly. In the business world, a mark takes an importance role. What actually a “mark” is?  A mark usually used by businessman or businessmen to sell the goods produced. A mark literally might has no meaning at all, however in a business activities, a manufacturer could use and make it to become a famous mark. For example is “KFC”. Does “KFC” have a special meaning? “KFC” is the abbreviation of “Kentucky Fried Chicken” which transformed into worldwide mark. No one ever predicted a mark that was sponsored by Colonel Sanders in the future its stake holder and company would pan of profit in the billions of US dollar. The fried chicken business franchise has spread his wing worldwide. Plenty of profit has been exploited by using the mark only. So now we can say that “KFC” mark is priceless.

Definition.

Commonly a mark can be chosen, used or registered by a businessman freely to market a product. But legally, the businessman’s freedom has its limitation because there are some mark cannot be registered by the businessmen as according to the Trademark Law. Such as the some marks that against the regulation, for example a sign/drawing/logo those are forbidden to be used as a mark of any product. Generally the public know and understand about the said forbidden sign/drawing/logo. Besides that from the business aspect, the said mark might be very suitable to be used as marketing, however since the valid regulation forbid the same to be registered therefore the said mark is unregistrable.

A “mark” is also not allowed to be registered because it has becomes a common asset (public domain). Such as the name of “Mart” or “Thermos” where both names have become domain names. “Mart” is not different to other names such as store, market or shop, therefore the group of Alfamart, Indomart, K mart or Circle mart as the owner of the convenient store do not have the right to forbid any other businessman to use the word “mart” as their business names.

A different application is applied on the words “Xerox” and “Kleenex”. In the US both names have been known in daily life and have become something very common. For example someone could simply say, “I need your help to Xerox this paper”. It simply means to make a copy of the said paper. Commonly the US communities have known that “Xerox” means copy and “Kleenex” means tissue paper.

However these marks will not become domain marks which are owned by the public but it will still owned by the owner of the US “Xerox” and “Kleenex” companies who have registered the same. Any other party is not allowed to register the said mark without the permission of the said companies.

Not different as the above, a mark cannot be registered because the same refers to the kind of goods. Marks such as “Coffee” for coffee kind of goods, “Tiam Kopi” coffee, café and restaurant kind of services are not allowed by laws to be registered. The Trademark Law No. 15 Year 2001 on Mark, Article 5 (d) mentioned that “a mark cannot be registered if the said mark contains information or related to the goods or service applied for the registration”.

For some marks, although refer to the domain names such as “Aqua” and “Supermie” however the Court allowed the above marks to be registered. For “Aqua” mark in the Supreme Court Decision No. 757K/Pdt/1989 dated March 30, 1992 decided that the word “Aqua” which means as a mineral water can be registered even for the water kind of goods. Similar to the above, the “Supermie” which means super noodle (mie) can be registered as a mark even the same is used to market the noodle kind of goods.

However until today it is still not examined yet whether or not the names such as Ak Am, Srikaya and Marquisa that refer to the local/regional food and drink that have been known by public can be used and registered as a trade mark to the Trademark Directorate? Let’s just wait and see.

* The writer is an Intellectual Property expert and the Managing Partner of Iman Sjahputra & Partners in Jakarta.


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