“Analisa” Daily, May 7, 2007.

An article by Iman Sjahputra, SH, SpN, LL.M. 

Indonesia has bound itself as the member of many international organizations. Shortly it can be said that administratively Indonesia has been “Go International”. The question is whether the joining of Indonesia as the members of many international forums will have significant effect to the people’s welfare?

As the member of the world organization, Indonesia has ratified and entered many agreements in the world level. In the field of trade we could quote the WTO (World Trade Organization) Agreement and AFTA (Asean Free Trade Agreement). In other field, we also have Extradition Agreement with Australia and Singapore. So is in the field of Intellectual Property Rights (IPR) protection, Indonesia has become the member of Bern Convention and ratified it in relation to the copyright. Paris Convention has also been ratified through the Presidential Decree No. 15/1977 and Trademark Law Treaty through Presidential Decree No. 17/1977 where both of the Conventions are related to the protection of trade and service mark.

On April 26 was commemorated as the IPR’s day it has been brought up the proposal to make Indonesia as the member and ratify the Madrid Protocol. So now the question is what are the benefits of all the international bindings for Indonesia?

Madrid Protocol is an international agreement on the registration of trade and service mark internationally. It means that the applicant of trade/service mark registration application do not need to apply the registration application for each country, but it can be done at once for the proposed countries. For an example, an applicant from “A” country would like to register “Beautiful” mark in Vietnam, Singapore and England countries. Since all the three countries above are the members of Madrid Protocol so the applicant only need to file it to one of the countries, for example England as the main country and the other 2 countries of Singapore and Vietnam as the subsequent countries by paying certain official fees. The benefit of this application is to avoid the long procedures applied by each country.

Online System

For such established country as England, the trade/service mark registration application can be filed by online system and the examination of the material of such application also can be done by electronically. The applicant’s country does not necessarily to come forward before the trademark official, except if there is any important query or problem needs to be clarified and solved. The entire original documents can be sent through registered mail. In case all the procedures have been done, either the formality, publication, opposition (if it is any), or the substantive examination, then automatically the trademark certificate can be issued. The trade/service mark certification covers 3 of the applied countries and legally the applied “Beautiful” mark will be protected by the 3 countries as the members of the Madrid Protocol.

Besides of the procedures are being simplified, the joining of a country as the member of Madrid Protocol indeed will save the registration application fees for the service/trade mark applicant since the businessman only needs to pay the honor of an IPR consultant to register the trade/service mark to the intended countries which is supposedly has to be paid for each country. Therefore a businessman could save the costs for IPR consultant.

Until today Indonesia has not yet ratified the Madrid Protocol and it might be caused by many reasons. The main reason could be caused by non-fulfillment of the international standards by the trademark examiner of the Trademark Office.

It does not need to be denied that the term of trade/service mark application filed through the Trademark Office as regulated in the Law No. 15 Year 2001 on Mark stated that certification of a trade/service mark from the date of application until the issuance of trade/service mark certificate takes about 16 to 18 months. But the fact is that all the processes above could take more than 2 years. What is wrong? There is no certain answer. The funny thing is that in there is still no clear formula in determining the basic similarity in principally or wholly of the trade/service mark. So there are many of the applications often to be rejected based on the examiner’s subjective consideration. As the consequences many of the foreign applicants are disappointed. Beside the quality of the examiner, the language is also often to be the problem.

For the trade/service mark international registration under the Madrid Protocol through WIPO (World Intellectual Property Organization), the guidance language of the application are in French, Spain and English languages. Are the trademark examiners of Indonesia ready to apply the languages? In case the application for trade/service mark registration application intended for Indonesia country filed through WIPO in Spanish language, will our examiners ready to accept and process the application? Therefore the urgent attitude to ratify the Madrid Protocol for international trade/service mark registration still needs to be reconsidered?

* Writer is an Attorney handling many cases on copyright, trademark and patent infringements and domiciled in Jakarta.