Implementation of Madrid Protocol in Indonesia
By Chamelia Sari, PRAWIRANEGARA International Patent & Trademark Law Office
Background
The Madrid system is an international route that provides a wider ease and reach for trademark owners to obtain trademark protection overseas compared to regional routes or national routes. This Madrid system begins with the inception of an agreement among the five countries those are France, Switzerland, Tunisia, Spain and Belgium, with the signing of an Agreement in the city of Madrid in 1891. The purpose of the signing of an agreement is to establish an international brand registration system that can provide brand protection among its member countries. Whereas, the member countries still have sovereignty in carrying out their national legislation, respectively.
In the current globalization era, the progress of information technology is developing very rapidly. It has an impact on the development of trade in goods and services around the world. Therefore, Indonesian government considers the need for a mechanism to protect national trademarks in global markets. National trademarks sometimes do not get protection in export destination countries because they have not been registered in the export designation country.
The obstacles for businessmen in Indonesia to apply for trademark registration overseas, among others: (1) a complex trademark registration procedure; (2) language; (3) expensive cost; (4) Application have to be submitted to each export designation countries.
Therefore, the Indonesian government decided to create an ease for national businessmen to register international trademarks in order to obtain legal protection for their trademarks. Because almost all countries in the world, apply a trademark protection system based on registration. Without registration, there is no legal protection (constitutive).
Accession urgency of Madrid Protocol
Trademarks are intellectual works that have economic value and provide added value, and improve the competitiveness of products manufactured by a company. In trading activities, consumers recognize a good or service consumed through a Trademark. In WIPO World Intellectual Property Indicator in 2013, in 2012 there are 6.58 million worldwide brand applications. A total of 46,829 applications filed through the Madrid Protocol, an increase of 6.4% from 2011.
Trademarks Applications in Indonesia ranks first compared to applications for Patents and Industrial Designs. In recent developments, there have been recorded a number of Indonesian products whose trademarks have been registered in several countries. This fact reinforces Indonesia's position to access the Madrid Protocol.
In addition to these factors, the following is also an important factor in the implementation of the Madrid Protocol by Indonesian government: (1) Indonesia's Commitment to ASEAN IP Action Plan 2004-2010 in Vientiane, Lao PDR and 2011-2015 in Bali, to access the Madrid Protocol; (2) Embodiment of the ASEAN Economic Community (MEA) Blueprint commitment year 2011 has been agreed by all ASEAN members, Indonesian government has issued Presidential Instruction Number 11 of 2011 on June 6, 2011; (3) The need to improve the investment and trade climate, and to enhance the national competitiveness of Indonesia's participation in the MEA since the year 2016; (4) Ministry instructions related to support the execution of the ASEAN Economic Community (MEA) Blueprint Commitment focuses on: Competition policy; Intellectual Property Rights, especially Accession of Madrid Protocol; Infrastructure development; Taxation; and E-commerce.
Accession of Madrid Protocol by Indonesian government
On October 2, 2017, Indonesia has submitted a notification to WIPO to become the 100th member country for the international registration system of Madrid Protocol. Thus, from January 2, 2018, Indonesia has been able to receive international trademark registration through the Madrid Protocol. The accession is ratified by Presidential Regulation no. 92 Year 2017 on Legalization Protocol Relating to the Madrid Agreement Concerning the International Registration Of Mark, 1989.
For the implementation of the Madrid Protocol, the Indonesian government has prepared several steps as follows:
Change Leadership. It establishes an Accession Team to lead and maintain initiatives towards accession and to encourage internal processes and ensure follow-up of the Road Map. The Accession Team consists of the Ministry of Justice and Human Rights, Indonesian IP Office (IIPO), Directorate General of Government Regulation and Secretariat General, Ministry of Foreign Affairs, State Secretariat, Ministry of Trade, etc. The Accession Team will conduct inter-ministerial consultations and endstage consultations to meet the requirements of the Government prior to accession.
Legislations, namely with the adjustment of legislation in the field of the trademark so that the Madrid Protocol can run optimally. The legislation includes Laws, Government Regulations, Presidential Regulations, and other provisions necessary for the implementation of the Madrid System.
Rules that have been enacted: (1) Law No. 20 of 2016 on Trademark and Geographical Indications. (2) Presidential Regulation No. 92 of 2017 on Ratification of Protocol Relating to the Madrid Agreement Concerning the International Registration of Mark, 1989, along with the declaration: Article 5 (2) (b) of the Madrid Protocol on the eighteen month period of examination; Article 8 (7) (a) of the Madrid Protocol on individual fee; Rule 20bis(6) (b) Common Regulations of non-automatic international license agreement valid in Indonesia, to apply for application shall be filed for registration to IIPO.
Organization and Institutional Considerations, by establishing an Accession Team to lead and maintain initiatives towards accession and to encourage internal processes and ensure follow-up of the Road Map. The Accession Team consists of the Ministry of Justice and Human Rights (Indonesian IP Office, Directorate General of Government Regulation, and Secretariat General), Ministry of Foreign Affairs, State Secretariat, Ministry of Trade, etc. The Accession Team will conduct interministerial consultations and end-stage consultations to meet the requirements of the Government prior to accession.
Procedural & Operational Considerations.
At this time Madrid Unit has developed an internal regulation that will regulate the Business Process, Standard Operational Procedure and guidance of the implementation of the Madrid Protocol in accordance with the legislation and the Madrid Protocol.
Business process will be adjusted with (1) The function of IIPO as the home country of the international brand application that is directed abroad; (2) The function of IIPO as the designation country of international brand registration originating from abroad.
(5)IT and automation considerations, namely the development of online application services, the development of Madrid Module (IPAS automation) to support the role of IIPO as the designation country of registration, as well as the projection of automation to support the role of IIPO as the home country of the application.
(6)Community changes, namely by conducting socialization, workshops, seminars and technical guidance related to the Madrid Protocol. Target community changes are national industries, business actors, small and medium entrepreneurs, intellectual property consultants, IP centers and other stakeholders. It is expected that stakeholders will be aware of the benefits of the Madrid system and become active users of the Madrid system to drive the improvement of the national economy.
CLOSURE
With the implementation of the Madrid Protocol by the Government of Indonesia, it is expected that this will benefit the business community in Indonesia (the trademark applicants) who wish to register their trademarks in various countries. This is certainly helpful for Indonesian export products to obtain legal protection for their trademarks in export destination countries. The number of foreign trademark applications that enter Indonesia is only about 10% of total trademark applications, so that the expected accession will increase foreign trademark application that will create a conducive climate for foreign investors. On the other hand, accession supports government programs in building a global trademark of Indonesian local products and in particular helping to grow businesses for Small and Medium Enterprises (UKM).
Bibliography:
Fatlurahman, SH., MM. "Preparations for the Implementation of the Madrid Protocol", Indonesian IP Office.
Ika Ahyani, "Direction of National Policy in Madrid Protocol's Accession", Indonesian IP Office.
Madrid—The International Trademark System, World Intellectual Property Organization.
Indonesian Trademark Law No. 20/2016.
