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Madrid Protocol = Improvement on Trademark Protection

Madrid Protocol = Improvement on Trademark Protection

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Indonesia officially became the 100th member of the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (the “Madrid Protocol”), which was inaugurated at the 57th World Intellectual Property Organization (WIPO) General Assembly in Geneva on October 2, 2017. The process of inducting Indonesia into the Madrid Protocol was ratified by Presidential Regulation No. 92 of 2017. Three months after the accession text was received by WIPO, precisely on January 2, 2018, the Madrid Protocol became effective in Indonesia.

Once the Madrid System comes into force in Indonesia, the local brand owners can register their brands in Indonesia and obtain protection for their brands not only in Indonesia but also in the other 116 countries of the Madrid Protocol. In addition, trademark registration from all over the world can be initiated from all member countries within the Madrid Protocol. In Indonesia, this is done through counters at the offices of the Directorate General of Intellectual Property of the Ministry of Law and Human Rights in Jakarta. The owner of an existing International Trademark Registration Certificate will be able to expand the scope of its protection by filing a subsequent designation to its existing International Trademark Registration, in order to seek additional protection in Indonesia.

Indonesia has opted for an 18-months deadline, within which the registrar is obliged to issue a notification of refusal of international registrations. However, in the case a challenge is raised by a third party, the Directorate General of Intellectual Property may notify the WIPO of a notification of refusal after the expiry of the 18-months time limit.

The Indonesian Government pays great attention to intellectual property protection to stimulate innovation and creativity as well as to promote national economic development. Indonesia's accession to the Madrid Protocol is in line with the economic diplomacy efforts geared to benefit Indonesian brand products as they penetrate into new (global) markets, ensuring the protection of such Indonesian brands within the target market countries.

Indonesia's accession to the Madrid Protocol demonstrates Indonesia's commitment in contributing to ASEAN's goal of promoting technology transfers in the region and stimulating innovation through cooperation in Intellectual Property Rights. By becoming the 100th accessor, Indonesia not only affirms its commitment in protecting IPRs but also benefits from WIPO's special assistance in promoting this system in Indonesia.

The Madrid Protocol is an international treaty between the WIPO member countries in 1989 as a legal basis for the establishment of the Madrid System for international registration of marks. With the Madrid System, WIPO member countries expect a simple registration system through a single registration office, local language, single fees, and local currency. Thus, upon receipt of the trademark registration by the local mark registration office, the registered mark will receive equal protection within the territories of the designated member countries as requested by the owner.

The International Trademark Registration through this protocol is not mandatory; its nature only provides an alternative (option) for mark owners to register and protect their mark in other member countries of the Madrid Protocol. The Madrid System offers a simplified mark registration process in many countries, which only requires one application under a system that covers several countries with a single currency reference for all transactions (CHF or the Swiss Franc). Under the conventional system, the mark owner or his proxy must come directly to register to the destination country one by one and even pay for the intellectual property consulting services in each destination country to carry out their registration process. Clearly, this would be cumbersom and expensive

However, special attention still must be paid under this streamlined system. If a party wants to register his/her mark through the Madrid Protocol, the mark shall be registered in advance (has a basic mark) in the origin country. However, it is possible to submit the basic applications and new registrations to the Directorate General of Intellectual Property for registration in the Madrid Protocol. The form/scope of protections for the registered mark owner under the Madrid Protocol is determined based on the results of substantive examinations, which are conducted according to the national law of the destination country, within a maximum period of 12 to 18 months.

All things considered, before conducting an International Trademark Registration, we suggest for you to consult first with the Intellectual Property office in the origin country, which has an important role in providing consultation facilities, conducting application validation and certification, identifying deficiencies, and correcting errors in filling out forms. In the meantime, if you need any information on registering and protecting your trademark in Indonesia, please do not hesitate to contact us at SLF.

Written by: Dewi Susanti S.H., M.Kn.




Madrid Protocol = Improvement on Trademark Protection