People who have designed a great Mark for their products or services often get asked by their consultants about what the name should actually be called. Because even if a Trademark contains letters or words, these do not always represent Mark’s real name as it is best to be registered. What are factors to bear in mind when picking a Trademark name which offers the broadest scope of protection?
First of all; giving your Mark a name is not required by law. Article 2 of Law 20/2016 about Trademarks states that a name, among others, can consist of a logo or an image – without any wording in it. Some sort of verbal identification for the Mark is however required when filing an Application for Registration. Therefore, lawyers and consultants will often propose to file a wordless mark with a brief description. A mark that comes in the form of an image of a bird can be called ‘LOGO BURUNG’ (‘bird logo’) for example.
A completely nameless Mark is in theory possible but is often not recommended by Intellectual Property consultants. The reason for this is simple; potential buyers of a Mark holder’s goods or services can hardly talk about a Trademark which does not have a verbal name. Besides this, adding words to a logo does not cost applicants any extra money as compared to having only a logo filed as a Trademark.
Visual Marks which do contain letters and wording are often also being accompanied by additives like ‘+ LOGO’ or ‘+ LUKISAN’ (an Indonesian word for ‘logo’). Consultants often suggest adding these words to put extra emphasis on the fact that there is a logo forming part of the Mark. Even if this logo’s presence is rather prominent and it seems unnecessary to add that there is a logo being part of the Mark, doing so does not cause any harm either. Someone holding a Trademark which is registered as ‘BATT + LOGO’ can start offering his goods and services under the Mark name ‘BATT’, and anyone using the Mark ‘BATT’ illegitimately will almost surely lose in court in case of disputes.
The disclaimer-box offers the possibility to express a dis-claim of certain words forming part of a Trademark. A party who for example has a Mark containing the words ‘ITALIAN AMBIANCE’ may want to clarify that he does not intend to claim the word ‘Italian’, as this refers to a country and can generally not be claimed by anyone. Simply including it in a Mark name, in other words, could reduce the chances the Trademark will be registered An applicant, in this case, can choose to claim the name ‘AMBIANCE’ only and disclaim the word ‘ITALIAN’, but can also disclaim ‘ITALIAN’ and have the Trademark filed as ‘ITALIAN AMBIANCE’.
Filing applications for registration of Trademarks containing words in foreign languages is possible. Letters from foreign scripts, such as Chinese or Arabic characters, are usually regarded as images when they form part of a Trademark. Applicants have the possibility to clarify the meaning of such characters by including a transliteration of these characters into the Latin alphabet in their Applications.
Applicants can also opt for some form of protection of the true meaning of such Latinized translations, or of foreign words from languages written in the Latin alphabet. The French words ‘CHAT NOIR’ for example will be mere sounds without a specific meaning when the average, not French-speaking Indonesian would hear them. In order for applicants to have the Indonesian meaning of these words somewhat protected as well – the meaning that is widely understood by the public – applicants can list this meaning in their Applications too.
Having the Indonesian meaning of the Mark ‘CHAT NOIR’ (‘kucing hitam’ – ‘black cat’) registered does not guarantee that no one else can use a Trademark being named ‘KUCING HITAM’. A good guideline to check whether the meaning of a foreign-language Trademark will enjoy protection is the ‘doctrine of foreign equivalent’. This theory roughly rules that if ordinary – in this case, Indonesian – consumers can translate the foreign trademark into the Indonesian language without any dictionaries or other tools, this Indonesian translation of said Mark will be protected too. Words from large indigenous languages such as Javanese or Sundanese may, therefore, enjoy the protection of their Indonesian translation as well, as many Indonesians speak these languages as a second language. The same goes for English or certain words from languages like Chinese or Arabic. Likewise, the fewer Indonesians will be familiar with the meaning of a word in a certain language, the lower chances are the Indonesian meaning of this foreign word will be legally protected. Therefore, holders of Trademarks with words in French or Madurese (from the Indonesian island of Madura) will probably be unable to stop someone using a Mark with the same meaning in the Indonesian language. Users of Marks containing words from languages with few speakers in Indonesia, ranging from smaller indigenous languages to foreign tongues like Czech or Norwegian, have basically zero percent chance to successfully stop others from using a Trademark having the same meaning. After all, virtually no Indonesian consumer will think about a black cat when reading the Czech word ‘cerna kocka’ – meaning, indeed, ‘black cat’.