Indonesia Joins the Madrid Protocol

On October 2, 2017, Indonesia’s Ministry of Law and Human Rights submitted its instrument of accession to the Madrid Protocol, making Indonesia the 100th member state under the treaty. As a result, brand owners will be able to seek protection under the Madrid Protocol from January 2, 2018, onwards. 

Once the Madrid System comes into force in Indonesia, the owner of an existing International Trademark Registration (IR) will be able to expand the scope of their protection by filing a subsequent designation to its existing IR, in order to seek additional protection in Indonesia. In addition, trademark owners will be able to file an IR in any other member country designating Indonesia, and trademark owners in Indonesia will similarly be able to file an International Trademark Application to seek protection of their trademark in any other member countries. 

Indonesia has opted for an 18-month deadline, within which the registrar is obliged to issue a notification of refusal of international registrations. However, in the case where an opposition is raised by a third party, the Directorate General of Intellectual Property may notify the World Intellectual Property Organization of a notification of refusal after the expiry of the 18-month time limit.    

In comparison, registration under the national route typically takes about 15-18 months for an applicant to receive the first notification. Please note, however, that with amendments to the Indonesian Trademark Law in November 2016, the publication of newly filed trademark applications through the national route takes place before substantive examination within only a few weeks after the filing date—and this new approach is expected to lead to an even faster time frame to obtain a registration. 

It is important to note that, while the Madrid Protocol will provide a good option for international registration, it is unlikely to substantially change the way that trademark applications are examined in Indonesia under local rules and regulations. 

The exact procedure for implementing the Madrid Protocol in Indonesia remains to be seen. It is expected that detailed regulations explaining the new procedures and new fees will be issued in late 2017 or early 2018.

By Tilleke & Gibbins, Southeast Asia, a Transatlantic Law International affiliated firm. 

For additional information about Indonesia’s accession to the Madrid Protocol and its implications for managing your trademark portfolio, please contact Wongrat Ratanaprayul at indonesia@transatlanticlaw.com. 

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