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INTELLECTUAL PROPERTY 101: MARK

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Startups are getting common in Indonesia. Nowadays, everyone has the desire to start a business, whether it is a culinary business, service, sports goods, etc. In the business context, identity is essential. Identity in this matter is normally represented by mark. Everyone knows Zara, Giordano, Adidas, KFC, and many more. Those are the easiest examples of mark.

Article 1 number 1 of Law Number 20 of 2016 regarding Mark and Geographical Indication (“UU Merek”) defines mark as a sign which comes in the form of picture, logo, name, word, letter, number, combination of colors, in the form of 2 (two) dimensions or 3 (three) dimensions, sound, hologram, or a combination of 2 (two) or more of those elements to differentiate goods and/or services which are produced by an individual or legal entity in the activity of trade of goods and/or services. Thus, that is why we can see broad variation of marks like the ‘swoosh’ mark of Nike or even the combination of Japanese characters.

Mark is special due to its exclusivity based on a certain right over a specific mark, this is called Right of Mark as defined by Article 1 number 5 which states that Right of Mark is an exclusive right over a mark given by the state to the owner of the mark and registered for a period of time which is used by the owner or by other party based on a consent of the owner. By looking to this stipulation, we can see that it is important for a mark to be registered since the Right of Mark is actually given by a state. No matter how famous a mark is, if the mark is not registered in a state, the owner of the mark does not have any sort of right over the mark in that state. Therefore, registration of mark is essential. Regarding the registration of mark, it is stipulated under Chapter III of UU Merek. After fulfilling the requirements set out under Article 4 to 10 of UU Merek, the mark will go through administrative examination as mentioned in Article 11 to 12 of UU Merek before going through the publication period for 2 (two) months (Article 14 to 15 UU Merek). Within this period, a third party may file an opposition regarding the mark. For example, Y is the owner of a mark “SNEAKERZ” who is trying to register his/her mark, meanwhile X is the owner of a mark “SNEAKERZZ” with a double ‘Z’, since the registration of the mark filed by Y may threat X’s mark, X may file an opposition to Y’s mark within the publication period. Opposition may be granted or rejected. Granted means the application for mark registration will be rejected and will not go to the next stage based on the opposition. Oppositely, if rejected, then the filed mark will go to the next stage. However, the owner of a rejected mark may file for an appeal regarding the rejection of his/her mark application. Regarding the appeal, it will be filed to the Mark Appeal Commission. Long story short, the next step will be the issuance of the mark certificate which will prevail for a certain period of time.

By virtue of Article 35 of UU Merek, a mark will be protected for 10 (ten) years since the filing date, which is the date when a mark application is filed to the authority (Indonesian Directorate of mark). This period can be extended upon expiration for another 10 (ten) years within 6 (six) months before or after the expiration date. It is an important thing to know that the protection of a mark prevails starting at the filing date, due to the fact that usually a mark certificate takes time to be issued in practice.

To add up, Right of Mark may be transferred to another party by means of:

  1. Inheritance;
  2. Testament;
  3. Endowment;
  4. Grant;
  5. Agreement; or
  6. Another means as stipulated by the prevailing laws and regulations.

A mark can also be used by a third party through licensing based on an agreement and listed by the Minister. Another way is a mark can be used collectively by two or more parties.

Regarding disputes that may arise regarding mark, these disputes could be settled under the jurisdiction of the commercial court. Then, the commercial court will declare a resolution as the outcome of the legal process. This resolution is subject to appeal and the appeal is subject to cassation.

In conclusion, whether someone’s mark is regarded as new or even well known world-wide, it is important to register it since the Right of Mark is given by a state and does not emerge after the mark is made and claimed by the one who made it. By doing so, the exclusivity of the mark may be granted to the one who made it and the maker will be regarded as the owner of the mark.

Reference :
Article 1 number 1 of Law Number 20 of 2016

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