On 2 January 2018, the Madrid Protocol will take effect in Indonesia. Following Thailand’s accession to the Protocol some weeks ago, this
is a natural and expected development.
Indonesia joins the Madrid System having submitted some of
the most common declarations permitted under the Madrid Protocol. The
Indonesian Trademark Office will be able to extend the time limit for refusal
of the trademark to 18 months, by virtue of Article 5.2 b) of the Protocol, and
will be able to charge an individual fee for applications, subsequent
designations and renewals affecting Indonesia, pursuant to the provisions of
Article 8.7. The Indonesian government has also made the declaration provided for
under Rule 20bis(6) of the Common Regulations, indicating that recordals of
licenses on the International Register shall have no effect in Indonesia. For
recordals of licenses to have effect, it will be necessary to file the
appropriate recordal application with the Indonesian Office.
There are certain particularities in legal and
administrative practice in Indonesia regarding the prosecution of trademarks.
For example, national applications must be accompanied by a Bona Fide
Statement. For the time being, the Madrid System does not appear to have
developed any formula for adapting this requirement laid down at national level
to the international level. Other member countries of the Madrid System have
addressed this requirement by formulating an ad hoc document or including an
express declaration on the international application form. It remains to be
seen how the Indonesian authorities will adapt those specifications of
goods/services that have been deemed acceptable by the home office or WIPO to
the sui generis practice in Indonesia. Such issues will arise in day-to-day
practice and it will be necessary to work closely with our network of local
agents to adapt to the new situation and guarantee the best possible strategy
for trademark owners with interests in Indonesia.
Author: Cristina Arroyo
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