On 2 October 2017 Indonesia officially became the 100th member of The Protocol Relating to Madrid Agreement concerning the International Registration of Marks (Madrid Protocol). The accession to the Madrid Protocol was completed through the issuance of the Presidential Decree No. 92 of 2017 which has been deposited to the Madrid Protocol with WIPO’s Director General. The Madrid Protocol will become effective in Indonesia by 2 January 2018.
The Presidential Decree No. 92 of 2017 provides that Indonesia has made the following declarations in regard to its accession to the Madrid Protocol:
1. With respect to Article 5 paragraph (2) letter (B) of the Madrid Protocol, the Government declares an 18-month time limit to notify a refusal to the International Bureau against an international application made under the Madrid Protocol.
2. With respect to Article 8 (7)(a), the Government declares its rights to receive fees produced from supplementary and complementary fees, in the event:
- An international trademark application is intended for Indonesia
- Indonesia becomes the next appointed country in the international registration
- A renewal for an international registration is intended for Indonesia
3. With respect to Rule 20 Bis paragraph (6) letter (B), Rule 20bis(6)(b) of the Common Regulations (recording of licenses in the International Register), the Government declares that it will not have any effect in Indonesia.
By joining the Madrid Protocol it is expected that the following benefits can be achieved by both Indonesian companies/entities and international companies wishing to protect their trade marks in other countries:
- They can file in one Office of Origin
- File in one language
- Fees in one currency
- Use of local agents only if there are office actions
- Results in one international registration
- Requires only one renewal
- If there are changes of ownership, its recordal will be recorded via the International Bureau
In anticipation of the accession to the Madrid Protocol, the Indonesian Government has stipulated Article 52 in the Law No. 20 of 2016 on Marks and Geographical Indication that would allow international trademark applications based on the Madrid Protocol. However Article 52 provides that for further implementation of international registration through the Madrid Protocol, the government would need to issue an implementing regulation in the form of a Government Regulation. Considering that the Madrid Protocol will become effective on 2 January 2018, it is expected that the Government Regulation will be issued soon.
We will keep you updated on this issue. In the meantime, if you need information on protecting your trade mark in Indonesia, please don’t hesitate to contact us.