By: Dr. Iman Sjahputra, S.H., SpN. LL.M)*
Until today there is no uniformity in determining the criteria of substantial similarity in kind of goods/services in a mark. The diversities in assessing the similarities in a mark indeed have an impact in the practice of law enforcement. The diversities often lead to the emergence of multiple interpretations of what is meant as "similarity". As the result it is quite often the applicants who want to register his/her trademark are disappointed because the Trademark Office rejects their applications.
Moreover, the power to determine the criteria of similarity on a mark is fully given to the Trademark Office. This is considered as less assessment objectivity by the applicants who are seeking to register their marks. The subjectivity in checking, sorting, analyzing and comparing a registered mark is obviously open widely.
The bottom line is that the justification standardize on the mark application is not created yet. That is the reason why there are many applicants be worried when they want to submit their trademark application for the products they produce.
Indeed, in terms of convenience, the Trademark Office in this case is the Directorate of Intellectual Property Rights simplifies the trademark registration processes. The applicant can do a preliminary check to check the availability of a mark whether or not a mark is already registered by anyone else. The preliminary search (checking) can be done online whereas the applicant can search and compare his/her mark with the other registered marks.
However, for the person who is not familiar with Internet technology they can come and ask for help to the officer at the Trademark Office to check it. Through the officer the applicant may request assistance for preliminary checking. Although it shall be noted that the result of the preliminary checking is only a beginning and it does not guarantee anything. Because the data obtained from the Trademark Office concerning a registered mark through the examiner or investigator in the Trademark Office is very subjective since in conducting the preliminary checking the examiner in the Trademark Office usually relies on the guidelines of "similarities with the registered mark either in its form, way of placement, way of writing, or a combination of such elements, or the sound similarity of a mark".
Another checked thing is whether or not there is "similarity" on the proposed mark with the existed famous marks or whether or not there is the geographical indication. For example, “Mc Donatt” and “Mc Donald” marks for restaurant proposed by the applicant is bound to be rejected by the examiner on the grounds that the mark will have the same sound with the well-known mark of “Mc Donald's” for the same class of service. Aside caused by the similarity of sound and speech, the similarity in this case is also created because of the famousness of “Mc Donald's” mark for the same class of service i.e. restaurant.
Definitely the consumers will have the same perception for both due to its similarity in sound. Perhaps when the consumers visit “Mc Donatt” restaurant thought that such restaurant is the same “Mc Donald's” restaurants that is famous for selling hamburgers and chicken. Moreover if both restaurants located side by side or in a nearby location, the consumers’ first impression will think that these two are interrelated restaurant owners or affiliates.
In trademark law practice, the well-known trademark guidelines more focused on same kinds of goods or services. As for the goods which are not under the same goods or services, the Supreme Court tends to give the explanation in accordance with Article 6 Paragraph 1 letter b of the Mark Law No. 15/2001 whereas public shall have a general knowledge of the mark.
What is public general knowledge as referred by Article 6 Paragraph 1 letter b above? It can be answered from IKEA v. IKEMA case under the Case No. 165PK/Pdt.Sus/2012 jo. Case No. 697 K/Pdt.Sus/2001 between INTER IKEA SYSTEMS BV against PT. ANGSA DAYA whereas the Supreme Court decided that IKEA mark is intended to the furniture and household products while IKEMA is ceramic and tile products, therefore the consumers intend to purchase furniture and household appliances of “IKEA” mark will not be confused by buying ceramic and tiles products under “IKEMA” mark, vice versa.
So with this Supreme Court’s decision can be used as guidance whether or not there is a “similarity” in a mark and as well as can be used as a handbook for the Trademark Office in examining the proposed mark.
*Author is an Advocate who handles many cases in Intellectual Property Rights.