Madrid Protocol in Indonesia - one year on
It has been a little more than a year since Madrid Protocol came into effect in Indonesia, on 2 January 2018. As of mid-March 2019, there were over 8,000 Madrid applications designating Indonesia. This is significant shift as the number of foreign applicants filing nationally dropped by almost half compared to 16,000 applications in 2017.
So far, around 5,000 Madrid applications have been received by the Indonesian Trademarks Office, within 2-3 months of the WIPO filing date. With a dedicated team of 9 examiners, examination takes about 12 months (from the international filing date), very much within the 18 months limit provided under Article 5(2)(b) of the Madrid Protocol.
The acceptance rate is high at about 80%. The most common ground for rejection is due to similar prior marks and historically, there are many local marks on the register which were filed in bad faith or are descriptive. In Indonesia, to overcome citations, letters of consent are not accepted even amongst related companies. Sometimes, prior marks which have been assigned to the applicant may still be cited because the database has also not been updated. As the 1 month deadline to respond to the Provisional Refusal cannot be extended and the Trademarks Office currently focusses on literal comparison of marks rather than real risk of confusion, we recommend clients to contact us early so that we can advise accordingly on how to deal with the cited marks beyond mere arguments – for example - investigations, negotiations and cancellation actions.
As Madrid applications are published by the Indonesian Trademarks Office before examination, brand owners still need to have watch services in place and monitor published marks. Oppositions on the ground of bad faith or well-known mark arguments without prior registered rights are difficult as the Trademarks Office tends to reject only identical or very similar marks. Before opposing, we recommend to check the WIPO database to see if any of the goods/services are limited as the Indonesian publications will not reflect any changes/limitation in goods/services.
If you have any queries regarding trademarks in Indonesia, please do not hesitate to contact us.
This article was first published by World Trademark Review in March 2019.