Author: Selvana Stella Oviona, Fahdli Ramadhan Suriyana
As a follow up to the accession of the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) on 2 October 2017, the Indonesian Government issued Government Regulation No. 22 of 2018 on International Registration of Mark under Madrid Protocol (“GR 22/2018”), which came into effect on 6 June 2018. GR 22/2018 was also issued as the implementing regulation of Article 52 paragraph (4) of Law No. 20 of 2016 on Trademark and Geographical Indications, which serves as a basis to implement the international mark registration system under the Madrid Protocol (“Madrid System”) in Indonesia.
The accession to the Madrid Protocol by the Indonesian Government primarily aims to protect local marks originating from Indonesia in international markets. Implementation of Madrid System by Indonesia also provides benefits for foreign mark holders, when registering/protecting their marks in Indonesia as one of their designated countries.
We set out below the basic requirements and procedures to file an international application for the registration of marks through the Madrid System (“International Application”) in Indonesia.
What are the Basic Requirements?
Pursuant to Article 2 of the Madrid Protocol, in order to be entitled to file an International Application, the applicant shall have a connection with one of the contracting parties of the Madrid Protocol, which is determined by (a) nationality of a contracting party; (b) domicile in a contracting party; or (c) a real and effective industrial and commercial establishment in a contracting party.
After ascertaining that the applicant has a connection with a contracting party, the applicant is also required to already have a “basic mark” in the location of the contracting party before filing an International Application. A “basic mark” refers to the applicant’s mark, which has been filed for registration or has been registered locally with the Intellectual Property Office (“IP Office”) of the contracting party, where the application originated from (IP Office of origin). Therefore, if Indonesian mark holders intend to file an International Application, they need to have already filed for registration (basic application) or have completed registration (basic registration) in the Directorate General of Intellectual Property at the Ministry of Law and Human Rights (“Indonesian IP Office”), as required by Article 5 of GR 22/2018.
What is the Filing Process?
Application to IP Office of Origin
Pursuant to Article 2 of the Madrid Protocol, an International Application shall be filed to the International Bureau of the World Intellectual Property Organization (“WIPO”) through the applicant’s IP Office of origin using Form MM2. The IP Office of origin will then examine whether the International Application corresponds with its basic mark. If cleared, the IP Office of origin will certify and forward it to WIPO.
In Indonesia, under GR 22/2018 an International Application shall be addressed to the Indonesian IP Office, which will examine (a) the completeness and correctness of information contained in the form; (b) conformity between the International Application and its basic mark; and (c) proof of qntlistration fee payment. It is worth noting that the relevant fees for every application filed through the Madrid System is calculated based on the Swiss Franc (CHF) currency.
If it conforms to the above requirements, the Indonesian IP Office will certify the application and forward it to WIPO.
Examination by WIPO
In this phase, WIPO will only examine the formal requirements of the International Application, e.g. the designated country of registration, the names of goods and services in relation to the locations of the international registration of mark classified according to Nice Classification and payment of fees. If the formal requirements are effectively met, the mark will be recorded in the International Register managed by WIPO and published in the WIPO Gazette of International Mark. WIPO will then send a Certificate of International Registration to the mark holder to acknowledge that such formal requirements have been complied. Afterwards, WIPO will notify the IP Office in the countries where the mark holder intends to protect its mark.
Examination by Designated IP Office
The IP Office of the designated country will then conduct substantive examination as to whether protection over the mark can be granted, in accordance with its domestic applicable law approximately within 12 months (under the Madrid Protocol a contracting party may declare this period to be extended to 18 months). In Indonesia, under GR 22/2018, the substantive examination over the International Application shall be conducted at the latest 18 months from the notification of registration date. IIf there is no response from the IP Office within 12 months or 18 months (maximum from the date of filing), such application shall become automatically registered.
Pursuant to the Madrid Protocol, if granted, the designated IP Office will issue a statement of grant for protection with validity for 10 years as of the date of filing and the possibility of renewal for another 10 years.