|
AN OVERVIEW OF THE MADRID PROTOCOL FOR INTERNATIONAL REGISTRATION OF MARK
Indonesia has ratified some International Convention on Intellectual Property:
- WTO – through Law no. 7 of 1994
- Paris Convention – through Presidential Decree no. 15 of 1997
- Patent Cooperation Treaty (PCT) – through Presidential Decree no. 16 of 1997
- Trade Mark Treaty – through Presidential Decree no. 17 of 1997
- Bern Convention – through Presidential Decree no. 18 of 1997
- WIPO Copyright Treaty – through Presidential Decree no. 19 of 1997
Soon to ratified Madrid Protocol.
EXISTING IP LAWS IN INDONESIA
- Law No.30 of 2000 Concerning Trade Secret
- Law No.31 of 2000 Concerning Industrial Design
- Law No.32 of 2000 Concerning Layout Designs of Integrated Circuit
- Law No.14 of 2001 Concerning Patent
- Law No.15 of 2001 Concerning Trademark
- Law No.19 of 2002 Concerning Copyrights
MAIN POINTS OF THE INDONESIAN TRADEMARK SYSTEM
- Constitutive System – Registration system
- Examination System
According to the Indonesian Trademark Law,
- Formality examination (1 month)
To check all the completion of required documents
- Substantive Examination (9months)
The Examiner will determine weather the trademark registration should be registered or not.
If after the examination process, the Examiner agreed to register the trademark, than this registration will be publish in the Official Gazette (for 3 months).
The purpose of this publication is an announcement to the public; therefore if there are any objections from any other parties, the other parties should submit an OPOSITION.
Based on this Opposition, the examiner will conduct a re-examination of the said trademark.
Without any Opposition during the publication, than the registration shall be registered and granted a certificate. However, no opposition will be granted filed after registration. The other parties have to go to the court and ask for a CANCELATION.
If the trademark is being rejected/refused by the Examiner, the applicant may file for an appeal to thegegeg DGIPR.
If Indonesia is to adopt the MADRID SYSTEM, these are the important points:
- Madrid System is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO). WIPO maintains the International Register of marks and publishes in the WIPO Gazette of International Marks.
- Any state which is a party to the Paris Convention may become a party to the Madrid Agreement or the Madrid Protocol or both.
- Madrid Protocol uses English, Spanish or French (Recently, there are 72 countries have joined), whereas
- Madrid Agreement uses French
- The system is to facilitate obtaining and maintaining protection of a trademark in several countries, by providing:
- a single ‘international application’,
- a single ‘international registration’ in a single language (English) and one set of fees in single currency (Swiss Francs). (The fees 73 Swiss France)
- a single procedure for renewing or changing the international registration
- The international registration procedure is less time consuming, less complicated, and less expensive
- The Madrid Protocol system is not the substantive or normative arrangement.
- It does not provide for ‘an international mark’ with ‘international rights’
- It does not determine the substantive conditions for granting protection
- It does not determine the rights which result from protection.
THE ADVANTAGES OF MADRID PROTOCOL
- To accommodate the small and medium-sized enterprises obtaining the trademark protection in the international registration.
- To support the national enterprises marketing their goods and services in the international trade
- To promote the national marks in the international trade
- To create a legal environment that may be attractive for foreign investment
Since Indonesia is to adopt the MADRID PROTOCOL, the preparations for
joining are:
- Developing human resources such example increasing English skill for the trademark examiners
- Establishing the computerized system in the Trademark Office
- Developing the database of trademark
- Revising of the trademark law and regulations to ratify the Madrid Protocol
QUESTIONS AND ANSWERS SESION:
- Can Indonesia adjust with the Madrid System which is with advance technology and computerization; while Indonesia recent system is currently still a disorder?
- If Indonesia ratifies Madrid Protocol, the role of IP Consultant will be really limited. Moreover, the IP License is mandatory for IP Consultants. So why should they take a license which takes 6 months of courses and costs 20 million Rupiah?
- When will Indonesia ratify Madrid Protocol?
ANSWERS:
- According to Mr. Didik Taryadi, as the head of Trademark Examiner in DGIPR, Indonesia has no difficulties adjusting with Madrid Protocol. Since Madrid Protocol is only procedural process (simplifying the procedural) and the substantive examination will be done in accordance to the National law.
And based on his experiences as the head of Trademark Examiner in DGIPR, substantive examination can be move forward with Madrid Protocol since it is operated with computerization. And all the certification will be done by WIPO as international Bureau.
Indonesia is facing difficulties with the Certification printing, which per year could reach approximately 50.000 trademarks.
Furthermore, Madrid Protocol is really flexible, since it gives the Examiner 18 months of substantive examination. And if within 18 months the Examiner has not finish the examination than the Trademark will be granted automatically.
- Although the role of IP consultants is going to be limited as an agent to help foreign applicant to register the Trademark in Indonesia, there are any refusal of any trademark than the foreign applicant should appoint a proxy in Indonesia. And this is where IP Consultants will have a great role.
- Currently, the new Trademark Law is being drafted. This new law is schedule to be in the parliament in the end of year 2007. Therefore, the ratification is probably in the near future.
|
