International trademark registration is a crucial step for brand owners to protect their intellectual property rights abroad. By registering an international trademark, brand owners can ensure that their trademark rights are recognized globally.
The legal basis for international trademark registration in Indonesia is governed by Government Regulation No. 22 of 2018 on Trademarks and Geographical Indications (“PP 22/2018”) and the Madrid Protocol, an international treaty for global trademark registration. PP 22/2018 outlines the procedures and requirements for trademark registration in Indonesia, while the Madrid Protocol, established under the Madrid Agreement Concerning the International Registration of Marks, allows brand owners to register their trademarks internationally through a centralized procedure.
The Madrid Protocol, administered under the World Intellectual Property Organization (WIPO), facilitates the international trademark registration process in a more efficient and cost-effective manner. By joining the Madrid Protocol, Indonesia enables its brand owners to apply for trademark registration in over 120 member countries without undergoing separate registration procedures in each country. This allows Indonesian businesses to extend trademark protection to international markets more easily and affordably.
Requirements for International Trademark Registration
The requirements for trademark registration are largely similar to domestic registration, with a few additional conditions to consider. Generally, the following requirements must be met for international trademark registration:
- The applicant must first register their trademark in Indonesia. This national registration serves as the basis for the international trademark application. This requirement aligns with Article 3(1) of PP 22/2018, which states that international trademark registration must be based on a national trademark registration.
- After national trademark registration, the applicant can submit an international trademark registration application through the World Intellectual Property Organization (WIPO). This application must be submitted using a special form provided by WIPO and can be filed electronically.
- The applicant must specify the countries or regions where they seek trademark protection. Only countries that are members of the Madrid Protocol can be selected as registration destinations.
- The trademark submitted for international registration must meet the same criteria as domestic trademark registration, such as compliance with applicable laws, absence of misleading elements, and distinctiveness to avoid confusion.
- If the applicant is unable to submit the application directly, the international trademark registration can be processed through a licensed legal representative or intellectual property consultant.
International Trademark Registration Procedure
The international trademark registration process follows specific steps outlined by the Madrid Protocol and its implementation under PP 22/2018. This procedure is more efficient compared to registering trademarks separately in each country. The main steps of the international trademark registration process are as follows:
- The applicant must first file a trademark registration application with the Directorate General of Intellectual Property (DJKI) in Indonesia as the country of origin. This application will be processed similarly to a national trademark application, including administrative and substantive examination by DJKI.
- Once the application is accepted by DJKI, it will be forwarded to WIPO, the organization responsible for facilitating international trademark registration. WIPO will conduct an administrative review to ensure the application meets the fundamental requirements of the Madrid Protocol.
- After WIPO’s review, the designated countries chosen by the applicant will examine the application based on their national legal requirements. Each country has the authority to accept or reject the application within a specific timeframe set by its regulations.
- If the application is approved by the designated countries, WIPO will issue an international trademark registration certificate valid in the approved jurisdictions. A trademark registered through this system is protected for 10 years and can be renewed.
- International trademark registrations require renewal every 10 years. Applicants must submit a renewal application through WIPO to maintain trademark protection in the registered countries. The renewal process is conducted simultaneously across all designated countries.
With the trademark registration system under the Madrid Protocol, brand owners can secure broader legal protection through a more streamlined process. The key advantage of this procedure is the simplified trademark management across multiple countries without the need for separate registration in each jurisdiction. Additionally, WIPO’s centralized mechanism ensures that trademark registration and renewal are conducted uniformly, reducing administrative burdens for brand owners.
However, it is essential for brand owners to understand the regulations of each designated country, as each country retains the authority to approve or reject trademark registrations based on its national laws. Therefore, consulting with an intellectual property expert is highly recommended to ensure that the chosen trademark protection strategy aligns with business needs. With optimal trademark protection, brand owners can strengthen their market position globally and prevent potential trademark infringements that could cause financial losses.***
Legal References:
- Government Regulation No. 22 of 2018 on Trademarks and Geographical Indications (“PP 22/2018”).
https://www.regulasip.id/book/33/read
References:
- International Trademark Registration. Directorate General of Intellectual Property (DJKI). (Accessed on February 20, 2025, at 08:35 AM WIB).
https://www.dgip.go.id/menu-utama/merek/pendaftaran-merek-internasional
- Madrid Agreement Concerning the International Registration of Marks. World Intellectual Property Organization (WIPO). (Accessed on February 20, 2025, at 08:40 AM WIB).