DGIP's Role as Destination Office for International Trademark Registration
Jakarta - Trademark registration through the Madrid Protocol system is a one-stop system solution for brand owners to obtain trademark protection in the international market. Through the Madrid Protocol system, brand owners can obtain brand protection in many countries more effectively, transparently and at a more affordable cost.
Indonesia has become the 100th country as a member of the Madrid Union (parties that signed the Madrid Protocol). The international mark registration system through the Madrid protocol system has been active in Indonesia since January 2 2018. Meanwhile, Indonesia has two roles in international mark registration.
"First, Indonesia as a country of origin and at the same time as a destination country. The role of the Directorate General of Intellectual Property (DGIP) as the office of the country of origin is to bridge registered trademark owners to register their trademarks through the Madrid protocol system," explained the Director of Brands and Geographical Indications Kurniaman Telaumbanua at the DGIP Learning Organization (Opera) activity on 14 June 2023.
"Meanwhile, the role of DGIP as a destination office plays a role in making decisions on applications for registration of international marks with the destination of the country of Indonesia. Even though trademark registration is through an international bureau, the treatment given to international trademark applications regarding substantive examination is the same as national trademark applications," he continued.
Kurniaman conveyed this based on the provisions in articles 20 and 21 of Law Number 20 of 2016 concerning Marks and Geographical Indications. Furthermore, he added that upon his accession, Indonesia stated that the results of the substantive examination would be carried out no later than 18 months.
Furthermore, he explained that during the substantive examination there would be three possible decisions. First, if no decision has been issued by DGIP within 18 months, the application for registration will automatically have registered status. Second, the results of the decision are registered if they meet the results of the substantive examination. Third, is for the status of the proposal to reject.
ex-officio examination on an absolute or relative basis which refers to the applicable regulations based on existing data. Not only that, it could also be if you get opposition from outside, third parties or a combination of these two things.
On the same occasion, Main Mark Examiner Subandini Nurtyas Utami explained that applicants who receive a rejected proposal will receive information regarding the notification of the reasons for the rejected proposal, the scope of the refusal stating the type of goods/class, and how the applicant can respond to the rejected proposal.
"An applicant who receives a rejected proposal can provide an effort through a letter of response to the rejected proposal, then the results of examining the response letter can be either fully accepted, partially accepted, or totally rejected," explained Subandini.
In addition, an application for an international mark submitted to the destination country may receive an invalidation decision , which is a decision made by an authorized official or office in the destination country that cancels an international registration.
"This cancellation could be due to a lawsuit in court or a violation of law which resulted in the cancellation of protection for international brands in the area concerned," said Subandini.
This issued Notification of Invalidation can affect all types of goods or only some of the types of goods. In this cancellation decision, the applicant cannot appeal.
Not only that, international marks can also extend their legal protection, subsequent appointments, transformation (a mechanism in the Madrid protocol is given if the application decision is rejected or loses protection in the country of origin), changing international brands to national ones, replacement or transfer, licenses.
In addition, changes to marks can also be made regarding name and address, ownership, limitations on goods or services, deletion of all goods, cancellation of all/part of which the office of origin will then submit to the International Bureau or WIPO.
Source : DGIP
Andromeda BA, SH
Indonesia as part of WIPO has ratified many international agreements, such as those concerning free markets, international trade and of course intellectual property, has become a destination for law offices, multinational companies and governments through state consulates to provide protection against Intellectual property especially International Brands. As a country with the 4th largest population in the world and a large GDP, of course registering a trademark in Indonesia will provide legal benefits and interests. Moreover, Indonesia has an important position in the ASEAN region and is a member of the G-20.
DGIP has become a role model in providing services related to Intellectual Property protection for countries in Asia and Africa, and this is also proven by its involvement and cooperation in various organizations and Intellectual Property offices both regionally and globally. Such as cooperation covering many aspects such as IP protection, electronic registration systems and enforcement including with the Japan Patent Office (JPO), The European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO). Therefore DGIP is entrusted by the Regional Intellectual Property Organization (ARIPO) to assist the Property Office in African countries for intellectual property protection.
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