GOVERNMENTS ISSUES IMPLEMENTATION REGULATION OF MADRID PROTOCOL REGARDING INTERNATIONAL REGISTRATION OF MARKS

OPENING

The Government issues Government Regulation No. 22 of 2018 on The Registration of International Marks under the Protocol relating to the Madrid Agreement regarding International Registration of Marks (“Regulation 22/2018”). This regulation acts as the implementing regulation of Article 52 of Law No. 20 of 2016 (“Marks Law”) that stipulate further provisions concerning the procedure for the application of international marks registration.

Summary

In general, Regulation 22/2018 is issued as a follow-up to the Madrid Protocol which were accessed by the Indonesian government in 2018. By the promulgation of this regulation, marks owners may apply to register their marks in order to obtain international brand protection through these 2 (two) following methods:

1. Marks Application originating from Indonesia will be directed to the International Bureau through the Minister (“International Application”); or
2. Marks Application originating from other countries which is addressed to Indonesia as of the designated country will be accepted by the Minister and the World Intellectual Property Organization (“International Registration”).

International Application

International applications may only be applied by (i) Indonesian nationals, (ii) applicant who reside or is domiciled in Indonesia, (iii) an applicant who manage tangible industrial or commercial business in Indonesia. Prior to the submission of International Application, the applicant should note that they should already own a Basic Application or Basic Registry.

International applications are then submitted for further assessment from the Minister. If the application meets the requirements, the Minister shall submit the application to the World Intellectual Property Organization (“WIPO”).

International Registration

International Registration is submitted by the WIPO to the Minister. The Minister will then proceed to make an announcement in order to ensure that are no objecting parties towards such international registration.

Subsequently, the Minister shall conduct substantive assessment. The result of the assessment will be submitted to WIPO and may either be registered or rejected. If the assessment result’s states the application is registered, then the Minister shall:

1. Submit a declaration of protection to the International Bureau;
2. Issue brand certificates; and
3. Make an announcement in the Official Gazette of Marks.

Marks registered under International Registration will be subject to legal protection for 10 years valid from the date on which the mark is registered on an international. This initial term of protection is renewable.

In addition to the provisions on the procedure of International Application and International Registration, Regulation 22/2018 also stipulate provisions regarding (i) licenses, (ii) cancellation or deletion, (iii) transformation and replacement of registered marks under international registration.

CONCLUSION

In overall, the Regulation is intended to provide legal certainty regarding international brand registration procedures in accordance with the provisions of the Madrid Protocol. Therefore, marks which are registered in Indonesia through the means of international applications not only obtain legal protection in Indonesia but also in the territories of participating countries of the Madrid Protocol and vice versa.

16 July 2018 007/AP-LH/VII/2018 -WNA-