The pros and cons of having foreign trademarks registered in Indonesia through the Madrid System

  • By:Kelvin Wibawa

The Madrid System offers trademark holders the opportunity file for trademark protection in multiple countries within one application, and therefore seems to be perfect for entrepreneurs with international ambitions. But is the Madrid System always the best choice for foreign parties to have their trademarks registered in Indonesia?

Advantages of the Madrid System

1. The Madrid System is cost-efficient for large companies

Due to the relatively high basic fee, a Madrid application for registration in a handful of countries tends to be much more expensive as compared to filing several national applications. The turning point is approximately fifteen countries. Filing for legal protection in fifteen nations through a Madrid application would cost one less than filing fifteen separate national applications – given the authorities of all countries concerned charge fees similar to the DGIP in Indonesia.

2. Madrid applications tend to be processed faster than national Indonesian applications

As every IP consultant in Indonesia will tell you, the procedure to have a trademark registered in Indonesia takes relatively long in comparison to most western countries. Periods of two years between the filing of the application and the receival of a trademark certificate are no exception. International applications on the other hand take the DGIP up to one year and a half to process – though having them finished within one year only is not unheard of either.

Disadvantages of the Madrid System

1. Madrid applications depend on prior national registrations

In order to file an application for international trademark registration, one first needs to hold a national registration of the trademark in question (or at least an application therefore). During the first five years of its existence, the international registration is dependent on this national registration. This means that, if the national registration gets cancelled during this period for any reason, the international protection of the trademark ceases to exist as well. The national registration could be cancelled due to expiration, but successful cancellation lawsuits filed by third parties could also put an end to a mark’s registration. Indonesian nationally registered trademarks on the other hand are independent of such prior foreign registrations; even if this foreign registration is cancelled, the Indonesian registration remains unchanged.

2. Madrid applications must be exactly the same as the prior national registrations from which they derive

Mark holders might want to make changes as to how an application has originally been filed nationally. Such changes can range from a change of address to a new holder of the trademark, or small alterations in the mark itself. Since a national Indonesian application is basically considered unrelated to the foreign registration of the same mark, the holder can make such changes as he pleases. He could for example file his Indonesian application with a slightly different logo as to how it is registered in his home country. In a Madrid application however, all information must be exactly the same as compared to the prior national registration on which it depends. In case the holder wishes to make some changes anyways, he will have to alter the national registration first.

3. Unless parties hire a consultant in every country concerned, they risk rejection of their Madrid request for protection in one or more countries

Arranging legal protection of a trademark in multiple countries through the Madrid System appears to have a trademark registered internationally. In this ease there is a danger. When applications are being filed nationally and therefore separately, applicants often tend to focus on each separate application, and consult regional IP agents to make sure their applications have a high chance of success. Protection of a trademark in Indonesia through the international system can simply be applied for by ticking a box on the Madrid application form. The risks of not consulting a local agent before filing an application for trademark registration are obvious. Applications could be in violation with national (trademark) laws and regulations – and even Madrid applications still must comply with the national laws of all countries in which registration is applied for. If this is indeed the case, an application will be rejected, and the applicant will lose his paid fees.

4. The Madrid System does not work for all countries, nor for all applicants

The Madrid System is based on the Madrid Agreement and the adjacent Madrid Protocol. As of July 2019, 121 countries are signatory states to either the Agreement or the Protocol. Though this includes the majority of the world, some fairly large jurisdictions such as Pakistan, Argentina and South Africa are not part of this global trademark registration system. Applicants being domiciled in, or being nationals of these countries can not make use of the Madrid System. Likewise, parties that are from signatory states can not arrange legal protection of their trademarks in non-member states through a Madrid application.

Read also : Tips Before Registering Trademark in Indonesia

Posted in: Articles, Legal Consultation, Professional Lawyers, trademark indonesia, Trusted Law Agency


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