Indonesian Trademarks: when is a Trademark considered ‘provocative’

  • By:Kelvin Wibawa
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As in most jurisdictions around the world, Indonesia has provisions in its Trademark Law forbidding the use of marks that are considered provocative. And, as is the case in virtually all countries as well, the question whether a mark is insulting remains an area which is largely undefined by laws.

Subjects not to contradict with

A first question to answer is which topics can not be contradicted by a trademark in order for it to be registered. Article 20 of the Indonesian Trademark Law (Law 20/2016) lists down some topics a trademark can not contradict with in order to be successfully registered. Trademarks insulting, or contradicting with, any of the following can therefore not be registered:

  • The valid laws and regulations

This is an obvious first one. Any trademark containing words, images, symbols or other elements that are forbidden by law can also not be used in a trademark. A good example of this could be a trademark containing the hammer-and-sickle symbol, as the use of this communist figure is prohibited by Indonesian Criminal Law (Amendment 27/1999, art. 107a).

  • Indonesian state ideology

Shortly after Indonesian independence, the country’s first president Soekarno proclaimed five famous principles that the new nation would be founded upon. These principles are commonly known as ‘Pancasila’, which comes with its own symbols and rituals. Any sign or statement in a trademark implying something negative about ‘Pancasila’ will lead to the rejection of a request for registration.

  • Religion

Trademark holders hoping for registration should keep their marks free from elements that deny, ridicule or contradict with religions. This includes large religions such as the Islam or Catholicism, but since the Constitutional Court issued its landmark decision 97/PUU-XIV/2016 on October 20, 2016, virtually every religion has obtained legal recognition as such in Indonesia.     

  • Decency or public order

This might be the hardest point to prove. While state ideology and religions often offer at least some sort of written definition to hold on to, decency and public order tend to be unspoken agreements among the majority of a society. An obvious, but fictional example may be a trademark showing sexual images.

read also : 5 Mistakes of Trademark Registration You Should Avoid

Relation between the trademark and the goods or services

At least as important as the words and images in the trademark itself is its connection with the goods or services the trademark will be used for. A good example of this is the seemingly innocent trademark PANDITA*, a mark which was intended for selling beer. The sale of beer under a trademark in itself is obviously not illegal – one only has to look at the numerous BINTANG bottles on a Balinese beach to see that this is not the case. But doing so under the name PANDITA was where problems started to arise. ‘Pandita’ in the local Balinese language means as much as a Hindu priest. Upon realizing this, the DGIP examiner handling the case realized associating a priest with an alcoholic beverage is not very respectful towards the religion in question. This led to the rejection of the application and the mark’s creator having to think of an alternative trademark.

Verbal marks: which languages are being checked to see if a trademark is provocative?

The ‘PANDITA-case’ explained in the previous paragraph illustrates the problem that Indonesia’s many languages can pose. Even a mark that might be ‘safe’ in the national Indonesian language could still have an insulting meaning in one of the over 700 many local languages. DGIP investigators will surely not open up 700 dictionaries to check whether or not a suggested verbal mark has a vulgar meaning in any language. But when an application ends up on the desk of an investigator who happens to recognize the mark as having an insulting meaning in his mother tongue, he or she will decide against its registration. Likewise, article 31 of Law 20/2016 allows for the possibility of cancellation of an already registered mark based on the grounds discussed in the second paragraph.

Not only Indonesia’s native languages could be checked to see if a verbal mark is provocative. If a trademark contains any words or sentences from a foreign language that contradict with, for example, public order or religion, the application in case must be rejected as well. Whether or not rejection actually takes place largely depends on whether the examiner happens to recognize the meaning of the foreign word. In practice it will therefore be more risky to file a verbal mark containing dubious words in English than to file a verbal mark containing, let’s say, words from Czech or Zulu language.

*We have used a fictional mark name here which is similar to the real one

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