KH friends certainly understand that trademarks are an important aspect that can distinguish your business from other competitors. Trademarks represent the quality and credibility of the products or services that your business offers. Thus, a trademark has become a valuable asset for your business. As important as trademarks are, have you ever wondered if they can be registered in more than 100 countries? Yes, 100 countries. The good news is, after Indonesia officially became a member of the Madrid Protocol since October 2, 2017, now business people in Indonesia have the convenience of registering trademarks abroad or internationally. Then, what is the Madrid Protocol? And what are the procedures that must be carried out by business actors to register their trademarks through the Madrid Protocol? Let’s discuss it further!
Definition of Madrid Protocol
Well, before KH pals register their trademarks abroad to be traded internationally, first get to know the intricacies of the Madrid Protocol. The Madrid Protocol itself is an international trademark and copyright recognition system established by the World Intellectual Property Organization (WIPO). This system was formed to handle the climate of international trade and communication whose boundaries are increasingly melting. Indonesia itself is the hundredth country to join the Madrid Protocol. Where this has been regulated in Presidential Regulation (PP) Number 92 of 2017. After being declared to join the Madrid Protocol, business actors in Indonesia can already register their trademarks officially abroad through the intermediary of the Directorate General of Intellectual Property (DJKI). Because the trademarks registered through the Madrid Protocol have been integrated in a system, KH pals as business people do not need to bother registering trademarks many times in each different country. Instead, it is enough to register once, then it is immediately recorded and protected in various countries.
Advantages of Registering Trademarks Through the Madrid Protocol
Here are some reasons why the Madrid protocol is something that is welcomed by various countries including Indonesia:
- Shorten the Trademark Registration Process
Before Indonesia officially became a member of the Madrid Protocol, businesses had to register their trademarks abroad one by one according to the destination and number of countries. This is certainly a time-consuming and lengthy process. But with the Madrid Protocol, it helps businesses to shorten the trademark registration process, namely through a centralized and integrated registration system.
- Reducing Brand Registration Fees
Conventional overseas trademark registration is costly, as the process has to be done one by one according to the number of destination countries. Entrepreneurs also have to hire consultants for each trademark registration process. But with the Madrid Protocol, businesses can cut these costs.
- Reducing the Risk of Extortion
Indonesia’s sometimes complicated bureaucracy is an easy location for illegal levies. However, this can be minimized if registering a trademark through the Madrid Protocol, because this system has set a standard rate in Swiss Francs. Where applicants in Indonesia are required to pay around CHf635 (around Rp9,239,000) for black and white marks or CHf903 (around Rp13,160,300) for colored marks. This will certainly help businesses to avoid extortion or unnecessary expenses when taking care of their trademark registration.
- Improving the Competitiveness of MSMEs
MSMEs will find it easier through the Madrid Protocol. As explained, the trademark registration process becomes shorter, less costly, and there is an official Madrid Protocol team at the DJKI that will help them to launch their market products abroad and boost their competitiveness.
- Protecting the Brands of Businesses
Prior to the Madrid Protocol, businesses, especially MSMEs, lacked trademark protection. This is due to the complexity of registering trademarks abroad which makes them helpless if there are large capitalized companies that use similar brands and logos. However, with the Madrid Protocol, businesses such as MSMEs can immediately “secure” their trademarks and get official legal protection.
- Increasing Product Value and Ease of International Trade
The process of registering a trademark abroad can help increase the value of a product or service that owns the product. This will certainly help increase the competitiveness and trade of business actors in national and international markets. Moreover, currently the Madrid Protocol also covers around 80% of world trade, making it easier for businesses who want to expand their marketing targets and engage in the dynamics of international trade.
Details of Trademark, Logo, and Slogan Registration
When registering a trademark under the Madrid Protocol, you will need to provide details regarding your brand, logo, and slogan. This is important to ensure that you do not have to deal with accusations of plagiarism and the like when your trademark competes abroad. Now, if you have a colored brand and logo, be sure to prepare the following:
- Name and Color Combination Information
KH pals must prepare two copies of the brand and logo files in black and white and color. They will be displayed next to each other in two large boxes on the MM2 form that can be downloaded on the official websites of the DJKI or WIPO. KH pals should also prepare information about the details of each color used in the mark and logo. This is because color combinations are considered distinctive features in trademarks.
- Color Placement Instructions
In addition to the description of each color, KH Buddy is also required to write the position of color placement in each part of the brand and logo. This is important to anticipate demands from brand or logo owners whose color combinations may be slightly similar.
- Special Transliteration Instructions
If you are registering a trademark in countries with a special script system such as Russia, China, Kepang, Korea, Greece, or Middle Eastern countries, then you must include a transliteration of the brand name into the appropriate script. The result of this transliteration will also then become part of the legal international mark, so that it cannot be claimed by other parties.
- Slogan
If the company, product or service has its own slogan for promotional purposes, then do not forget to include the slogan when applying for trademark registration abroad. You should also provide a transliteration of the slogan if you want to market to countries that use a special script.
- Unique Shape Elements of Brands and Logos
You must include information if your brand or logo contains unique elements, such as three-dimensional logos, special sound symbols that are difficult to translate, certification logos, and so on.
Trademark Registration Procedure Through the Madrid Protocol
After understanding what is meant by the Madrid Protocol and the details of the brand and logo that need to be included, then next KH Friend can apply for registration of the brand to the International Bureau through the DJKI. Where according to Article 3 paragraph (4) of PP No. 22/2018, who can apply through the DJKI are:
- Applicants who have Indonesian citizenship;
- Applicants who have legal domicile in Indonesia; or
- Applicants who have a real industrial or commercial business activity in Indonesia.
The application must contain:
- Name and address of the applicant;
- Reproduction of the applicant’s mark;
- Code of the goods and/or services for which protection is sought; and
- List of destination countries where protection for the mark is applied for (some countries have specific requirements if KH Friend wants to register there)
After the application is submitted, an examination will be carried out by the DJKI. Where the DJKI will examine including:
- The applicant is the same party as the trademark holder or applicant in Indonesia;
- The trademark filed in the application for international registration is the same as the principal trademark in Indonesia; and
- The classification of the goods and/or services requested is the same as in Indonesia.
Furthermore, the DJKI will send the application to the International Bureau (Article 7 of PP No. 22/2018). If the application has met all the requirements, the International Bureau will register your trademark in the international register and issue an International Registration (IR) in the International Trademark Gazette. You will also get a Certificate of International Registration. The time required for the process of registering a trademark abroad varies, usually the process of registering and checking the completeness of documents in Indonesia is only about six months, but the examination process by institutions in the destination country can take one to one and a half years.
KH Contact
How about KH Friend, already understand it better, right? But of course, before applying for trademark registration, KH pals must first ensure that the trademark is in accordance with Law Number 20 Year 2016 on Trademarks and Geographical Indications (Trademark Law). You must ensure that your trademark does not violate the provisions of the Trademark Law, and that there are no similar/identical trademarks that have been registered or applied for registration at the DJKI. In addition, since you want to register your trademark internationally, you also need to check whether there are similar/identical marks with your trademark in other countries. Eittss, there is one other thing to keep in mind! KH pals also cannot register a trademark abroad, if the trademark has not been registered at the DJKI or at least has been requested to be registered(Article 5 of PP No. 22/2018). Therefore, before registering a trademark abroad, make sure you have checked the trademark and registered it officially with the DJKI! Now, you don’t have to go through the hassle of doing so thanks to the trademark registration service at Kontrak Hukum. With a fast and efficient process, Kontrak Hukum can help you to process trademark registration through the trademark check process first! Visit our website https://kontrakhukum.com/kekayaan-intelektual/. If you have any questions about trademark, copyright, or other business needs, you can also contact us at Tanya KH, or via Direct Message (DM) to Instagram @kontrakhukum.
