The Madrid Protocol in Indonesia – eighteen months later

  • By:Kelvin Wibawa
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Last July it was exactly eighteen months ago since Indonesia officially entered the Madrid Union. Since January 2, 2018, foreign individuals and companies could apply for protection of their trademarks in Indonesia along with requests for such protection in other countries – all within one and the same application. Though filing such an international application is not always the better solution as compared to filing a national application, it appears to have one huge benefit. If followed correctly, the Madrid protocol leads to faster application procedures than the national procedure.

Where does this eighteen-months deadline come from?

read also : The Pros and Cons of Having Foreign Trademarks Registered in Indonesia

The deadline of eighteen months comes straight from the Madrid Protocol itself. Article 5 of the Protocol mentions that the Intellectual Property offices of signatory states have to decide upon Madrid applications within twelve or eighteen months after they have been filed. Although the twelve-month period is the regular one, candidate signatory states have the possibility to declare an eighteen-month period in force in their jurisdictions. The Indonesian government decided to make use of this opportunity by indeed granting its Directorate General of Intellectual Property a period of maximum one year and a half for the processing of Madrid applications. This declaration is stated in Article 13 of Presidential Regulation 22/2018 about International Trademark Registration.

Does the Directorate General of Intellectual Property meet its deadlines for Madrid applications?

Anyone who has ever been involved in Indonesian trademark registration knows the national application process for trademark registration is a time-consuming one. According to Trademark Law 20/2016, the entire process should take up and about eight months if everything goes smoothly. In reality however, even an application procedure without corrections or oppositions often takes as much as two years. Applicants and their representatives alike have little possibilities but to wait until the Directorate General of Intellectual Property issues a decision. The crossing of the deadlines by the Directorate General of Intellectual Property does not grant applicants any additional rights or compensations.

Luckily, the Directorate General of Intellectual Property appears to process incoming Madrid applications well within the eighteen months they have for this. WIPO’s Madrid Yearly Review of 2019 shows that, as of January 1, 2019, almost 5,600 Madrid applications have been filed including the request for registration in Indonesia. An article from the World Trademark Review in turn describes how most Madrid applications are processed by the Directorate General of Intellectual Property within a year, which is well within the deadline.

What happens if national Intellectual Property offices cross this deadline?

Article 5 of the Madrid Protocol grants national Intellectual Property offices the possibility to reject Madrid applications if these applications contradict provisions from the relevant national laws and regulations. The same Article 5 however states Intellectual Property offices lose this right once they do not decide upon an application within twelve, or in Indonesia’s case, eighteen months. This means the Directorate General of Intellectual Property would be forced to register a trademark if it crosses the eighteen-months deadline – even if the application is not in line with the Indonesian (trademark) law. It remains unknown whether the Directorate General would indeed grant protection to a mark contradicting applicable Indonesian legal provisions. Such cases are not known, but in a few cases the relevant authorities of other member states of the Madrid union have still refused to register trademarks included in Madrid applications after the eighteen-months deadline had passed. In some countries, such as Kenya and Mozambique, the enforceability of the Madrid System remains troublesome. The Indonesian Directorate General of Intellectual Property officially does acknowledge these strict time limits and the consequences of not issuing any decision within these limits, as is stated in its Madrid Protocol guide for Indonesian entrepreneurs.

Posted in: Articles, trademark indonesia, trademark law

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