Indonesia's accession to the Madrid Protocol in January 2018 marked a fundamental shift in how foreign businesses protect their trademarks in the Indonesian market, and how Indonesian brand owners pursue international registration. For companies operating across ASEAN or entering the Indonesian market for the first time, understanding the practical implications of the Madrid System is now central to any trademark strategy.
What the Madrid Protocol Changes
Before Indonesia joined the Madrid Protocol, securing trademark protection in Indonesia required filing a standalone national application directly with the Directorate General of Intellectual Property (DGIP) through a locally licensed representative. This meant separate fees, separate correspondence, and a separate prosecution track for every territory. Foreign applicants had to engage Indonesian counsel, manage Indonesian-language correspondence, and track application status through local channels.
The Madrid Protocol collapses this burden into a single international application filed through the World Intellectual Property Organization (WIPO). An applicant with a base mark in their home country can designate Indonesia along with up to 130+ other contracting parties in a single filing, paying combined fees in Swiss francs to WIPO. For brand owners managing multi-territorial portfolios across Southeast Asia, the administrative simplification is substantial.
The Examination Process Under Madrid
Once WIPO transmits the international application to the DGIP, Indonesia has 18 months to examine it and raise any objections. The DGIP applies the same substantive standards that govern national trademark applications: the mark must be distinctive, not deceptively similar to earlier registrations, not descriptive of the goods or services, and must not consist entirely of a common surname or geographical name.
If the DGIP issues a refusal, the applicant has the right to respond through the same procedural channels available to national applicants, including submission of arguments and evidence of acquired distinctiveness. If the DGIP does not issue a refusal within the 18-month window, the international registration is granted effect in Indonesia automatically. This predictability is one of the Madrid system's most valued features for trademark portfolio managers.
Central Attack Vulnerability and Dependent Registrations
The Madrid system's primary structural risk is dependency on the base mark. For the first five years following registration, an international registration is vulnerable to what practitioners call "central attack": if the underlying base application is refused or the base registration is cancelled or invalidated in the country of origin, the international registration — and all national designations derived from it — fall with it.
This creates a strategic planning obligation. Applicants must ensure their home-country base mark is robust and defensible before filing an international application, particularly if the goods and services covered are commercially significant. Once the five-year dependency period has elapsed, the international registration becomes independent of the base mark and can survive its cancellation.
Madrid vs. National Filing: When Each Makes Sense
The Madrid system is efficient for multi-territory filings, but national filings remain preferable in specific circumstances. Applicants seeking protection only in Indonesia will find a direct national application cheaper and often faster. National filings also offer greater flexibility in claim drafting and allow for tailored prosecution strategies from the outset. For applicants with non-standard marks — including marks that depend heavily on proof of acquired distinctiveness in the Indonesian market — a direct national filing with local counsel coordinated from the start often produces better outcomes.
CIPatent advises both foreign applicants filing into Indonesia and Indonesian brand owners building international portfolios through the Madrid system. Whether your strategy calls for a direct national application, an international filing through Madrid, or a combination of both, our team can structure the approach that best secures your mark at optimal cost. Contact us at cipatent@cipatent.com.