When registering a trademark with the Directorate General of Intellectual Property (DJKI), many business owners assume that filing a trademark in a different class of goods/services automatically makes the application safe from rejection. Logically, if the trademark name is the same but operates in different fields (for example, a clothing brand vs. a restaurant brand), the two will not interfere with each other.

However, in practice, a trademark registration CAN STILL BE REJECTED even if filed in a different class.

Why can this happen? What legal regulations underlie it, and how can you anticipate it so that your trademark application does not end in rejection?

The trademark registration system in Indonesia adheres to the First to File principle (whoever registers first has the right). In general, trademark classification is regulated based on the Nice Classification system, which divides goods and services into classes 1 to 45.

Although the basic principle of classification limits protection according to the class registered, Article 21 of Law Number 20 of 2016 concerning Marks and Geographical Indications provides an important exception that allows different-class applications to still be rejected:

1. Protection of Well-Known Marks

Based on Article 21 paragraph (1) letter b of Law No. 20/2016, a trademark registration application will be rejected if it has similarities in essence or in whole with a well-known mark belonging to another party for goods and/or services of a different type (different class), as long as it meets certain requirements.

According to the Explanation of Article 21 paragraph (1) letter b of Law 20/2016:
Rejection for non-similar goods/services is carried out if the application could cause an association with a well-known mark belonging to another person, or has the potential to harm the holder of the well-known mark.

2. Criteria for Well-Known Marks according to Permenkumham No. 67 of 2016

To determine whether a mark is categorized as "Well-Known" so that it crosses the boundaries of goods/services classes, DJKI refers to Article 18 of the Regulation of the Minister of Law and Human Rights No. 67 of 2016, which assesses among others:

  • The level of public knowledge or recognition of the mark in the relevant business field.
  • Sales volume, market reach, and the value of promotional investment for the mark.
  • Registration of the mark in various countries.
  • The level of distinctiveness and reputation attached to the mark.

Examples of Different Class Trademark Rejection Cases

To provide a clearer picture, here are several scenarios in which a different-class application will face rejection from the DJKI trademark examiner:

  • Global/Local Well-Known Mark Scenario:
    If someone files the trademark name "Coca-Cola" or "Indomie" for fashion products (Class 25), the application has a high potential to be rejected by DJKI. Although "Coca-Cola" is registered in Class 32 (beverages) and "Indomie" in Class 30 (food), the high reputation of these marks is protected across classes to prevent bad faith and consumer misleading.
  • Closely Associated Goods/Services:
    The trademark examiner also assesses the degree of product relatedness. An application for an identical name for software/application products (Class 9) and software development services (Class 42) is still considered to have a very strong logical connection in the eyes of consumers.

Risks Lurking If You Force the Use of a Similar Mark

Forcing the registration or use of a name similar to a well-known mark, even in a different class, carries several administrative and legal risks:

  1. Letter of Proposal for Rejection from DJKI: The application will receive an office action in the form of a Proposal for Rejection from the trademark examiner.
  2. Potential Opposition from the Original Mark Owner: The registered mark owner has the right to file an objection during the official trademark announcement period.
  3. Trademark Cancellation Lawsuit to the Commercial Court: Even if it passes and a certificate is issued due to examination negligence, the well-known mark owner can still file a lawsuit for cancellation of the trademark registration to the Commercial Court.

Preventive Steps to Keep Your Mark Safe from Rejection

So that your business trademark application runs smoothly without experiencing rejection, take the following anticipatory steps:

  1. Conduct an In-Depth Trademark Search Analysis (Deep Brand Search): Do not just check the name in the intended class. Also check whether the name is already registered as a well-known mark or has phonetic similarity with a major mark in another class through the Intellectual Property Database (PDKI).
  2. Create a Name with High Distinctiveness: Use fanciful/coined words that are unique and do not imitate or ride on the reputation of an existing name.
  3. Register the Trademark from the Start Through Proper Procedures: Ensure the legality of your business identity is protected along with the management of basic permits such as NIB (Business Identification Number) and the establishment of a legal entity through PT Establishment or Sole Proprietorship PT Establishment.

FAQ About Different Class Trademark Registration

Can two identical marks coexist if both are not Well-Known Marks and are in different classes?
Yes. If both marks are registered for truly different (non-similar) goods/services and neither is categorized as a Well-Known Mark, then the cross-class protection article does not apply, so both can be registered in their respective classes.

What should be done if our trademark application receives a Letter of Proposal for Rejection from DJKI?
You are given the opportunity to submit a Written Response/Objection to DJKI within 30 working days from the date of receipt of the letter of proposal for rejection, by attaching strong legal arguments.

Protect Your Trademark Assets and Business Legality with Awan Kusuma Legalitas

Managing trademark registration requires careful legal search analysis to avoid DJKI rejection and potential future disputes. The Awan Kusuma Legalitas team is experienced in assisting business owners in conducting comprehensive trademark searches, determining the correct goods/services class classification, and processing IPR registration safely and transparently.

We are ready to help process all your business legality needs comprehensively. Starting from registration and protection of brand identity via IPR / Trademark, legal entity ratification via PT Establishment andSole Proprietorship PT Establishment, issuance of business licenses through NIB, to fulfillment of corporate tax compliance such as PKP and Annual SPT. Together with us, your trademark registration and business legality are guaranteed to run smoothly and comply with regulations.

Want to check the potential success of your business trademark registration before filing with DJKI? Contact the Awan Kusuma Legalitas Team via WhatsApp now for an integrated trademark search analysis!