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February 14, 2019

A Look Back on the First Year of the Madrid Protocol in Indonesia

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Informed Counsel

On October 2, 2017, Indonesia officially became the hundredth country to accede to the Madrid Protocol, which came into effect a few months later, on January 2, 2018. Following accession to the protocol, Indonesia issued Government Regulation No. 22 of 2018 on Registration of International Trademarks under the Madrid Protocol (GR No.22/2018), effective June 6, 2018, which set the requirements for two categories of applications:

  1. International applications with Indonesia as an office of origin; and,
  2. International registrations with Indonesia as a designated contracting party.

International applications with Indonesia as an office of origin

Under GR No.22/2018, an international application with Indonesia as an office of origin must be based on either a basic application or existing registration in Indonesia, and must be filed with the Indonesian Trademark Office (ITO). The trademark office will validate and certify those applications within five days of receipt, and forward them to the International Bureau within two months of receipt.

International registration with Indonesia as a designated country

Similar to an international application, an international registration must be accompanied by a basic application or proof of registration. The International Bureau (IB) will forward a notification of any international registration that designates Indonesia as a contracting country to the ITO, which will then publish it for two months, during which time any third party may file an opposition. Any oppositions received will then be considered during the substantive examination stage, which begins at the end of two-month publication period.

The result of the substantive examination must be forwarded to the IB within 18 months from the date of receipt of the notification. If protection in Indonesia is approved, the ITO will notify the IB, issue a registration certificate, and publish a notification of registration in the Indonesian Trademark Gazette.

If protection is rejected, the ITO will issue a rejection notice to the international applicant and inform the IB of its reasons. The international applicant may file a response against a preliminary rejection within 30 days from the delivery date. The response must be written in Bahasa Indonesia and can only be filed by proxy through a local attorney. If a permanent rejection notice is issued as a result of the response, the applicant can appeal to the Trademark Appeal Commission, by proxy, as a last resort. The commission will inform the ITO of its decision, the ITO will inform the IB, and the IB will inform the applicant.

If the basic application or registration underpinning an international registration is cancelled within five years of the international registration (known as the dependency period), the holder of the international registration may file a transformation request within three months from the date of that termination. Any transformation of an international registration protected in Indonesia will be recorded and published in the Indonesian Trademark Gazette. If transformation is requested for an international registration that has applied for protection in Indonesia, but has not yet been granted it, the ITO will continue the trademark prosecution process.

GR No.22/2018 also stipulates that national registration can be replaced by an international registration if it meets certain requirements. An application for replacement should be addressed to the ITO, which will notify the IB if all the requirements are met.

Observations and Issues that have Emerged

The Madrid Protocol is designed to be a one-size-fits-all scheme that is thought to make the filing process simpler, and is undoubtedly beneficial for trademark owners when it comes to protecting their marks in multiple countries—especially in regards to cost effectiveness. However, in practice, it is not as straightforward as it may seem, and international registration holders are required to deal with a number of practical issues throughout the protocol’s trademark prosecution process, many of which require liaison with the ITO.

The most common problem encountered arises when grounds for rejection, stated in a rejection notice, are unclear. When such an issue occurs, it is usually necessary to make a direct visit to the ITO to inquire about the actual legal grounds used to determine the rejection. 

Another issue that may occur concerns the deletion of covered goods or services. Within the past year there have been several cases in which the ITO issued a notice stipulating the deletion of covered goods or services—a notice against which no response can be filed. The most common reason for deletion is that the ITO finds that the goods or services do not belong in the class for which the applied mark is asking protection. These situations are a huge inconvenience, particularly if the deleted goods or services are essential. Although not an ideal solution, one feasible workaround to ensure protection is to file a new national trademark application for deleted goods or services, incurring the costs and delays that the process entails.

Thirdly, all international registrations are published in the ITO’s Madrid Protocol Gazette—a different publication than the reliable gazette used for marks filed through the national trademark filing system. We have found that the specimen of the international registration’s mark published in the Madrid Protocol Gazette may differ from the actual specimen. This can cause great confusion, and a direct inquiry to the ITO might be required in order to solve the issue.

Since the accession to the Madrid Protocol, Indonesia has seen an increased number of filed oppositions, believed to correspond to the filing of thousands of international registrations designating Indonesia as one of the countries to which protections should be extended. The ITO has also been stricter on the accuracy of every application submitted, and any error in a registration, regardless of how slight it may be or which administrative authority it was caused by, may have to be dealt with at the ITO. Therefore, trademark holders should anticipate the possible occurrence of the issues above prior to filing an international registration, and budget accordingly.

The rationale behind Indonesia joining the Madrid System was to simplify the trademark application process for holders of local trademarks, in order open access to wider protection. However, according to the ITO, as of January 16, 2019, less than 50 international applications stating Indonesia as an office of origin have been filed, amounting to 0.5% of the total. On the other hand, about 6,500 international registration have been filed with Indonesia selected as a designated country. With that in mind, a long road remains ahead of Indonesia to achieve the original rationale.

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