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Madrid Protocol-International Trademark Filing Strategy

International Trademark Filing Strategy:
REGISTRATION UNDER MADRID PROTOCOL

The Madrid system (officially the Madrid system for the international registration of marks) is a primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. Its legal basis is the multilateral treaty Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989).

The Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create a unified registration, as in the case of the European Union trade marksystem, for instance; rather, it creates a bundle of national rights through an international registration able to be administered centrally. Madrid provides a mechanism for obtaining trademark protection in many countries around the world which is, to some extent depending on the certain purposes, more effective than seeking protection separately in each individual country or jurisdiction of interest.

The Madrid Protocol system provides for international registration of trade marks by way of one application that can cover more than one country. The opportunity of having a single registration to cover a wide range of countries offers you many advantages, both in terms of portfolio management and cost savings, as opposed to a portfolio of independent national registrations.

Benefits of the Madrid System for the Applicant:

(a)  Simplified Registration Process and Post-Registration Management :

    (i)   File with one Office of Origin

    (ii)   One procedure

    (iii)  File in one language

    (iv)  Fees in one currency

    (v)   Foreign agent is not required unless there is an objection or refusal (substantive issue)

    (vi)  One international registration

    (vii)  One renewal

    (viii) Changes recorded centrally via the International Bureau (IB)

(b) A single application produces the same legal effect as nationally filed applications

(c)  Save time and money by filing one application

As for Indonesia, the country has been the 100th member of the Madrid Union and the Madrid Protocol came into effect in this jurisdiction on 2 January 2018, then an implementing regulation namely Government Regulation No. 22 of 2018 on Registration of International Trade Mark Madrid Protocol was enacted and took effect as of 6 June 2018. Accordingly, nowadays it is possible to designate Indonesia under international trade marks. 

One year prior to accession to Madrid Protocol on 2 October 2017, the Government of Indonesia issued new law namely Law No. 20 of 2016 on Trademark and Geographical Indication that came into effect on 28 November 2016, within which the provisions on International trademark application were mentioned (particularly on Article 52).


 
MADRID SYSTEM PROCEDURESFROM INDONESIA:

  • Stage I: Application from Indonesia as Office of Origin
  1. The applicant submits an application for filing an international trademark with condition that applicant has filed a trademark application or has a registered trademark in Indonesia (basic mark).
  2. Indonesia’s Directorate General of Intellectual Property (DGIP) conducts validation and certification on international trademark application and forwards it to the WIPO.
  • Stage II: Formal examination by WIPO

WIPO only conducts formal examination of the international application, then (upon approval) recording it in international register and publishing it in the WIPO Gazette of International Marks, then WIPO issuing the international registration certificate and sending it to the designated countries.

  • Stage III: Substantive examination at designated countries

In the respective trademark offices of the designated countries, the scope of protection of the international trademark application will be determined and decided based on the substantive examination results in accordance with the respective national laws of the designated countries for a maximum period of 12 or 18 months (applicable time limit). WIPO will record the decisions of the respective IP Offices of the designated countries in the International Register and then notify the Applicant.

OUR SUGGESTION

For those clients who intend to file an international trademark application via Madrid route from Indonesia, it would be to your advantage to use your Indonesia’s registered trademark as the basic mark, as it had been cleared in term of conflict with the other marks at national scope.     

For those clients who should use a non-registered trademark in Indonesia as a basic mark, for such reason as time limitation to enter the market etc., it is advisable to file a new trademark application in Indonesia preceded by a due diligence searching to justify that the trademark application has a very strong position and high potential of registrability over the competing marks currently pending or registered at the Indonesian Trademark Office/DGIP.

By Trademark Team

Batavia Patentservis Asia