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

Visit our website: http://www.elzaburu.es/en

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

Visit our website: http://www.elzaburu.es/en

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

Visit our website: http://www.elzaburu.es/en 

Algeria joins the Madrid Protocol

Algeria deposited its instrument of accession to the Madrid Protocol on 31 July 2015, and the Protocol is to enter into force for Algeria on 31 October 2015.

Algeria was the only one of the 95 current member States of the Madrid System that was a party to the Madrid Agreement alone.

The Madrid Agreement is much less streamlined and up to date than the Protocol. For instance, international filings have to be based on a granted trademark registration, and certain procedures can only be carried out through the home Office. Not only do these sticking points give rise to delays and complications, but the Agreement does not allow the designation of States that are parties only to the Protocol, which include such major jurisdictions as the OHIM, JPO, and USPTO. This has no doubt been a stumbling block for Algerian trademark owners, who up to now have not been able to use the Madrid System to extend their rights to members that are parties to the Protocol alone.

Although the Madrid System comprises the Agreement, the Protocol and the Common Regulations, since the amendment of article 9 sexies of the Protocol (the safeguard clause) it is the Protocol alone which applies between States bound by both the Agreement and the Protocol. The accession of Algeria therefore represents a milestone for the Madrid System, given that from 31 October 2015 all international registrations of marks will be governed exclusively by the Protocol and the system as a whole will, as a result, be greatly simplified.

Author: Cristina Arroyo

Visit our website: http://www.elzaburu.es/en