Indonesia becomes the 100th Member of the Madrid Protocol

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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Thailand joins the Madrid System

Thailand has recently deposited its instrument of accession to the Madrid Protocol and it has become the 99th member of the Madrid System concerning the International Registration of Marks. 

With the accession of Thailand, fewer and fewer Southeast Asian countries remain outside the international trademark registration system. This new accession will make the internationalization of trademark rights easier for rightholders through simplified protection strategies in a highly popular jurisdiction.

Over the past few years, Thailand has been working on harmonizing its local registration system and preparing to join the International System. For example, they have adapted their local classification of goods and services "item by item" in line with a more homogeneous application of the Nice Classification. However, in Thailand there are legal and administrative peculiarities, such as, for example, the requirement to associate trademarks belonging to the same proprietor. 

We shall see how the Department of Intellectual Property (DPI) handles the new scenario regarding international registration of trademarks.

Author: Cristina Arroyo

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Thursday, 14 April marked the 125th anniversary of the Madrid International Trademark System

Since it was first adopted in Madrid in 1891 with the aim of facilitating the internationalization of trademarks in a world that had already embarked on the path of globalization, the system has continued to adapt and grow.

The system currently covers 113 countries, which gives an idea as to its scale, since it is possible to file trademarks using this system in around half of the world’s jurisdictions.

The system has seen changes and improvements, and it has been made more flexible in order to pursue its commitment to internationalization.

Among other milestones, in the past few decades and through the Madrid Protocol, English and Spanish have been added to French as official languages. We have seen greater flexibility in the setting of time limits, the payment of fees and in the conditions of accession, and we have also seen filings admitted on the basis of trademark applications rather than registrations.

Thus, a great many countries, some of major economic, commercial and strategic importance and also important culturally and in terms of population size, have been able to benefit from the advantages the system holds for their country as well as for domestic and foreign investors. We may cite examples such as the USA, Mexico or Colombia, but there are of course other countries from different geographic, economic and cultural spheres, including countries in Europe, that have been able to find their place in the Madrid International Trademark System through the Protocol.

The administration of the system by WIPO, which has itself continuously sought to adapt and improve, has without doubt contributed to the system’s progress.

There are certainly challenges ahead for the system, such as its increased expansion to Latin American countries and to countries in other regions of the world, but throughout the past 125 years it has shown a capacity to adapt in a period in which the world has seen the biggest changes in its history, and therefore that capacity augurs a bright future.

Elzaburu would like to offer its congratulations to an international system which, we are proud to say, was born in Spain, itself a symbol of universality. Our congratulations naturally extend to WIPO, without whose continuous efforts the system would not have consolidated and grown as it continues to do.

Author: Juan Miguel Sainz de Marles

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Accession of Rwanda to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

On 17 May 2013 WIPO officially announced Rwanda's accession to the Madrid System, whose members, with this year's accessions, now number 91. 

The Government of the Republic of Rwanda deposited its instrument of accession on 17 May 2013. 

The Madrid Protocol will enter into force, with respect to Rwanda, on 17 August 2013.

Author: Foreign Filing Department

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India joins the Madrid System for the International Registration of Marks

On Monday April the 8th 2013, WIPO officially announced India's accession to the Madrid System for the International Registration of Marks, bringing the number ofcountries that have joined the Madrid System to 90.

The instrument of accession to the Madrid Protocol for the International Registration of Marks has been deposited by India's Minister for Commerce and Industry.

India's accession will take effect on 8 July 2013, at which time it will be possible to protect trademarks in India either as Indian national trademarks or in the form of international marks designating India as a Contracting Party.

Author: Foreign Filing Department

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New Accessions to the Madrid Protocol relating to the Madrid Agreement concerning the International Registration of Marks

Designation of the Philippines and Colombia became possible under the Madrid Protocol in the framework of the Madrid System for the International Registration of Marks on 25 July and 29 August 2012, respectively.

Designation of New Zealand, in turn, will be possible from 10 December 2012.

To date, the number of countries that have joined the Madrid System totals 88, with Mexico being expected to join in early 2013 and afterwards Thailand.

Trademark rights will thus be obtainable under the Madrid System for the International Registration of Marks in three IberoAmerican countries. Cuba has been a member of the Madrid System since 1989, Columbia has recently joined, and Mexico will become a member shortly.

Author: Cristina Arroyo, Juan Miguel Sainz de Marles e Inmaculada Rodes

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