Many business actors still assume that a trademark is safe to register as long as the name has not been used or registered by another party. However, in the practice of trademark law in Indonesia, such a condition does not necessarily guarantee that the application will be accepted by the Directorate General of Intellectual Property (DGIP).

The trademark legal system in Indonesia does not solely assess whether a name is already owned by another party or not. The Trademark Law also assesses whether a mark is eligible for protection as a trademark and whether its use has the potential to cause legal conflicts or confusion among the public.

Therefore, not a few trademark applications are still rejected even though the applicant feels the name is still "available".

In general, the grounds for trademark rejection in Law Number 20 of 2016 concerning Trademarks and Geographical Indications can be divided into two major groups, namely absolute grounds as regulated in Article 20 and relative grounds as regulated in Article 21.

Article 20 regulates rejections related to the eligibility of a mark to be used as a trademark. In this context, the rejection does not depend on the existence or absence of other parties' trademarks, but rather because the mark is considered from the outset to not meet the requirements for legal protection as a trademark.

For example, a trademark can be rejected because:

• It lacks distinctiveness;
• It only describes the type or quality of goods/services;
• It is too descriptive;
• It misleads the public; or
• It is contrary to morality and public order.

Therefore, names like "DELICIOUS COFFEE" for coffee products or "SPORT SHOES" for sports footwear still risk rejection even if they have never been registered by anyone. The issue is not one of ownership conflict, but rather because the name is considered too generic and thus lacks sufficient distinctiveness to function as an exclusive identity for a business actor.

Unlike Article 20, Article 21 relates to the potential for conflict with the rights of other parties. This is known as relative grounds, which means rejection because a trademark is considered to have substantial or complete similarity with another trademark that already has legal protection or a certain reputation.

The assessment of similarity in trademark law does not always depend on identical written similarity. In trademark examination practice, similarity can be assessed from the sound of pronunciation, visual impression, word structure, to associations that arise in the public's mind. Therefore, a trademark can still be considered problematic even if it has additional letters, design variations, or color differences.

It is at this point that many business actors misunderstand the trademark registration process. They often think that a simple search on the internet or marketplace is sufficient to ensure the safety of a name. However, trademark examination has much broader legal parameters than simply checking if the name has been used commercially.

In practice, a trademark may not have been used by another party, may not appear in the marketplace, or may not even be registered in the same class, but it still risks rejection because it is considered too descriptive, lacks distinctiveness, or has substantial similarity with another trademark based on trademark law assessment.

Therefore, building a brand is fundamentally not just a matter of marketing creativity, but also legal strategy. Names that are too generic are generally difficult to obtain exclusive protection, while names that are too close to other parties' trademarks, especially well-known trademarks, risk being considered to create associations, confusion, or even to piggyback on the reputation of other parties.

Ultimately, trademark registration is not merely a matter of "first come, first served." The trademark legal system also assesses whether a mark is indeed worthy of exclusive rights and whether its use has the potential to cause confusion among the public.

That is why a trademark application can still be rejected even if the name has never been registered by another party. Therefore, trademark analysis before filing an application is an important step to minimize the risk of rejection and potential legal disputes in the future.

IndoTrademark IP Law & Brand Strategy