More good news for the European SMEs wishing to register their trade mark in South-East Asian countries, as in addition to Thailand, Indonesia has also joined the Madrid Protocol. Today’s blog post explaining Indonesia’a accession to Madrid Protocol has been kindly drafted for us by our South-East Asia IPR SME Helpdesk external expert Ms. Wongrat Ratanaprayul from Tilleke & Gibbins.
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.
This article first appeared on Tilleke & Gibbins website. Please see the original article here: http://www.tilleke.com/resources/indonesia-joins-madrid-protocol
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Author’s Short Bio
Wongrat Ratanaprayul serves as director of Tilleke & Gibbins’ Indonesia operations. After working as an attorney-at-law in the firm’s Bangkok office for a number of years, Wongrat is now based in Jakarta, where she focuses on all aspects of patent and design prosecution in Indonesia, as well as in multiple jurisdictions throughout Southeast Asia. Her work covers a range of technical fields including biotechnology, pharmaceuticals, automotive, electronics, and computer-related technology.
Wongrat regularly interviews inventors to derive information pertinent to drafting patent applications in life sciences, and for consumer products. She provides opinions on infringement analysis and freedom-to-operate analysis. She also routinely conducts patent and design searches and provides clients with patent strategies. Her background allows her to provide effective, tailored services to a diverse range of clients.
Wongrat supervises the preparation of trademark applications, registrations, and renewals. She also oversees the firm’s regulatory affairs practice in Indonesia, serving clients in pharmaceuticals, food, cosmetics, and related industries with respect to product registration and compliance.