100 and counting: Indonesia joins Madrid Protocol

The Madrid Protocol is an international treaty which simplifies the procedure for international registration of trademarks by filing a single application along with onetime payment fee. The protocol was adopted at Madrid on June 27, 1989, amended on October 3, 2006 and further amended on November 12, 2007 [1]. The Protocol provides for convenient and effortless managing and registration of trademarks worldwide. A landmark moment in Madrid System history was October 2, 2017 as Indonesia officially became 100th member of the Madrid Union on this day. The instrument of accession to the Madrid Protocol with WIPO’s Director General was completed through the issuance of the Presidential Decree No. 92 of 2017. The Protocol will become effective for Indonesia on 2 January 2018 [2].

Indonesia is one of fastest growing top five G20 economies and a leader in global marketplace and membership in   Madrid Union opens up a direct path for Indonesian enterprises in new marketplaces like US, China, Europe and Japan. Indonesia is the eighth member of the Association of Southeast Asian Nations (ASEAN) to join the Madrid System after Vietnam which became member in 1995 [4]. It further reinforces the motto of ASEAN, to promote technology transfer throughout the region and stimulate innovation through strengthened IP-rights co-operation.

Once the Madrid Protocol comes to force, local economic growth will be stimulated as the Indonesian nationals will be able to seek protection of their trademark in the territory of other member countries. Likewise, the owner of an existing International Trademark Registration (IR) will be able to expand the scope of their protection by filing a subsequent designation to its existing IR, in order to seek additional protection in Indonesia.

The Presidential Decree No. 92 of 2017 provides that Indonesia has made the following declarations in regard to its accession to the Madrid Protocol [3]:

  1.  With respect to Article 5 (2)(b) of the Madrid Protocol, time limit of 18 months will be given to notify a refusal to the International Bureau against an international application made under the Madrid Protocol.
  2. With respect to Article 8 (7)(a), the Government declares its rights to receive fees produced from supplementary and complementary fees, in the event:
  • An international trademark application is intended for Indonesia
  • Indonesia becomes the next appointed country in the international registration
  • A renewal for an international registration is intended for Indonesia.
  1. With respect to Rule 20 bis(6)(b) of the Common Regulations (recording of licenses in the International Register), further on it will not have any effect in Indonesia.

The Madrid Protocol after gaining instrument of accession from Indonesia becomes the fifth WIPO administered treaty after the WIPO Convention, the Paris Convention, the Berne Convention and the PCT. Indonesia’s entry into the Madrid system as its 100th member clearly showcases its significance of being a key component of global protection of trademarks. It also highlights a cost-effective and reliably convenient solution it provides to global brand owners.

For an applicant to apply for trademark protection in Indonesia, he/she must browse the Global Brand Database which has almost 870,000 marks currently registered in that market before he/she files an international application.

Just before Indonesia entering into the Madrid system, Thailand became the 99th member of the Madrid System. The Protocol will enter into force for Thailand on November 7, 2017 [5]. This development can be seen as indication of news from remaining two ASEAN members, Malaysia and Myanmar.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

 [References]

[1]http://www.wipo.int/treaties/en/text.jsp?file_id=283484

[2]http://www.wipo.int/madrid/en/news/2017/news_0020.html

[3]http://www.wipo.int/madrid/en/members/declarations.html

[4] https://www.state.gov/p/eap/regional/asean/

[5]http://www.wipo.int/madrid/en/news/2017/news_0015.html

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