Adjectives on the Trademark Frontier What’s Allowed in Indonesia?

To be unique and have high selling value, sometimes business owners want to add adjectives to the trademark of their goods or services. That’s why we often see names like “Beautiful Dress,” “Hot Coffee,” “Delicious Foods,” “Under Table,” “Above Sky,” “Self Success,” or “Eternal Win” as business names. But can these names be registered as trademarks?

According to the Indonesian Dictionary (KBBI), adjectives are words that can describe nouns, which can generally be combined with the words “more” and “very.” Apart from the words mentioned above, other examples of adjectives are sweet-salty, little-a lot, young-old, rich-poor, big-small, sad-happy, far-close, and many more.

If we refer to Law (UU) Number 20 of 2016 concerning Marks and Geographical Indications which was subsequently amended by Law Number 6 of 2023 concerning the Determination of Government Regulations in Lieu of Law Number 2 of 2022 concerning Job Creation into Law,

Suppose we refer to Law Number 20 of 2016 concerning Marks and Geographical Indications which was subsequently amended by Law Number 6 of 2023 concerning the Determination of Government Regulations in Lieu of Law Number 2 of 2022 concerning Job Creation into Law. In that case, no special provisions prohibit the use of adjectives in a trademark as long as they can be displayed graphically and have distinguishing power from previously registered trademarks. However, it is also necessary to see whether this adjective is the only word used or only the second related word. If this is true, it will conflict with Articles 20 to 21 of the Trademark Law, which make the mark unable to be registered (Absolute Grounds for Refusal) and rejected (Relative Grounds for Refusal), as follows:

Absolute Grounds for Refusal (Article 20 of the Trademark Law)

A trademark cannot be registered or is not eligible to be a trademark if:

a. Contrary to state ideology, laws and regulations, morality, religion, decency, or public order. Example: Trademarks that offend ethnicity, religion, ancestry, and group of people or are vulgar, such as “Burn Java.”

b. Relates to, or only mentions, the goods and/or services for which registration is requested. Example: “Dark Chocolate” cannot be registered because it only describes the quality or type of chocolate. The Indonesian Trademark Office (DGIP) rules regarding words that only relate to the kind of item or the thing in one word; in this case, “Chocolate” can not be registered and must still be used by the public.

c. Contains elements that can mislead the public about the origin, quality, type, size, type, intended use of goods and/or services for which registration is requested or is the name of a protected plant variety for similar goods and/or services. Example: “Papuan Satay” but not made by Papuans, using a Madurese recipe with Garut Lamb, and sold in the Banten region.

d. Contains information inconsistent with the quality, benefits, or efficacy of the goods and/or services produced. Example: “Tasty Pebbles.”

e. It has no distinguishing power. Example: Brands with nothing unique or too simple, such as “Chicken Porridge.”

f. Common name and/or symbol of public property. Example: The “P Strikethrough” logo means No Parking.

g. Contains functional image forms. Example: “Fork & Spoon” logo for a restaurant.

Relative Grounds for Refusal (Article 21 of the Trademark Law)

Once your Trademark is deemed worthy, they will proceed to the following sorting process, with the following criteria:

1. Having similarities in principle or its entirety with a registered Trademark belonging to another party or previously applied for by another party for similar goods and/or services.
2. Has similarities in essence or its entirety with a well-known Trademark belonging to another party for similar goods and/or services.
3. Having similarities in principle or its entirety with a well-known mark belonging to another party for dissimilar goods and/or services that meet specific requirements.
4. Has similarities in essence or its entirety with registered Geographical Indications.
5. Represents or resembles the name or abbreviation of the name of a famous person, photo, or a legal entity owned by another person, unless with written approval from the person entitled to it.
6. An imitation or resembles the name or abbreviation of a country or national and international institution’s name, flag, symbol, or emblem, unless with written approval from the authorized party.
7. Imitation or resembles an official mark, stamp, or seal used by a state or government institution unless with written approval from the authorized party.
8. The application is only accepted if it is submitted by an applicant with good intentions.

To determine whether your Mark can pass the Basis of Relative Rejection, where it is substantially or entirely similar to a registered Trademark belonging to another party, you must conduct a “search” process. Only by carrying out this process can you see real comparisons and gain insight into how likely your Brand will be accepted by the Indonesian Trademark Office: Directorate General Intellectual Property (DGIP).

Some examples of Trademarks that contain adjectives and have been registered with DGIP are:

1. “BEAUTIFUL” registered in class 9, since 2003
2. “HAPPY” registered in class 35, since 2003
3. “BIG” registered in class 19, since 2013
4. “HOT&COOL” registered in class 21, since 2015
5. “RICH” registered in class 11, since 2015

Suppose during the search process you find similarities in essence or their entirety with a registered Trademark belonging to another party for similar goods and/or services. In that case, you can carry out phonetic development as one of the tips. Example: