Trademark International Registration System - Madrid Protocol System

On 27 September 2019, Malaysia deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO), making it the 106th country to join the Madrid Protocol (“the Protocol”). The Protocol officially entered into force in Malaysia on 27 December 2019, the same day the Trademarks Act 2019 came into force. Read more about the Trademarks Act 2019 here.

With its accession to the Protocol, the Madrid system ("the System"), which is an international trademark registration system is now available to brand owners in Malaysia.

WHAT DO TRADEMARK OWNERS NEED TO KNOW?

What is Madrid System?

• An international trademark registration system administered by World Intellectual Property Organisation (WIPO) whereby a trademark owner can obtain trademark protection in over 122 countries (as at October 2020) in ONE language and by paying ONE set of fees.

• Enables expansion of global trademark portfolio through ONE centralized system

Who can apply for trademarks via the Madrid System?

• A citizen of Malaysia

• A body or corporation incorporated or constituted under the law of Malaysia

• A person domiciled in Malaysia; or

• A person who has a real and effected industrial or commercial establishment in Malaysia

The Madrid System Trademark Registration Process & Time Frame

• Filing of basic application: An applicant for trademark registration must first file a trademark application for the mark or already have a registration for the mark in Malaysia before filing an international application using the System through the Office of Origin - Intellectual Property Corporation of Malaysia (MyIPO).

Cost

The cost for filing a trademark via the Madrid System includes the basic fee and additional costs for entering into the countries the trademark owner wishes to obtain trademark protection in. This depends on the number of countries designated, whether the mark is filed in colour or in black & white, how many Classes of goods and services will be covered by the registration and provisional refusals issued (if any). The more countries and/or Classes designated, the more costly it will be.

There will be notable cost savings if trademark owners apply for registration using the Madrid system if trademark owners have an interest to register their trademark in several countries (say, 5 or more countries) and the countries of interest are countries which are traditionally costly to gain trademark registrations in, for example, due to procedural requirement for legalization of Power of Attorney, translation cost or additional fees for additional descriptions of goods/services applied for.

Please contact us for a fee quotation to file and register your mark using the Madrid system.

Advantages of using the Madrid System

• Convenient

• Only a single application is filed in ONE LANGUAGE to obtain trademark protection in multiple countries​.

• Managing of brand portfolio is simpler under ONE centralized system.

• Easy expansion of brand protection into new markets.

• Cost-effective

• Pay only ONE set of fees to obtain trademark protection in multiple countries.​

• No translation of application is needed.

• Cumbersome and costly notarization and/or legalization cost of Power of Attorney avoided.

• Cost savings is observed if a trademark owner extends protection to multiple countries.

• Ease of renewal with just ONE renewal form and ONE fee in ONE currency.

• Quick examination and processing time

• IP Office in the designated countries will have 12 or 18 months (depending on the length of time the particular member country opted for) from the time it receives the application from WIPO to examine the application and provide their responses.

Disadvantages of using the Madrid System

• Reliance of international applications on basic application for 5 years, counting from the international registration date

• The “central attack” phenomenon will cause all applications in other countries that are based on that basic application to be invalid if the basic application is rejected within 5 years from the international registration date.

• However, if a central attack does occur, trademark owners have the option of converting the applications/registrations into separate national applications/registrations in the relevant countries.

• Inability to transfer trademark ownership to an entity which is not a member country of the Madrid System

• Trademarks must first be withdrawn from the Madrid System before transfer of ownership to an entity which is not a member country of the Madrid System can be done​.

Still unsure whether to file your trademark using the Madrid System?

Still contemplating whether to use the Madrid System? Take the following into consideration:-

1. Countries which market you have penetrated or would like to expand to

• It is advisable to utilise the System if the countries of interest are members of the Madrid Protocol, and if there are several countries that you wish to file your mark in. This will bring about notable cost savings.

2. Budget allocated in the trademark filing exercise

• You will need to take into account the cost of filing the basic application (if you have not filed it), basic fee of the international trademark registration and additional costs depending on the countries you wish to protect your trademark in. Do get in touch with us for a fee quotation if you have plans to go global!

• It is also advisable to conduct trademark searches in the designated countries before filing an application via the Madrid System. Hence, additional budget should also be allocated to conduct searches in all the designated countries.

3. How the mark is used in each country and its scope of goods and/or services

• The mark filed using the System must be IDENTICAL to the mark under filed in the Office of Origin. Hence, if variants or different versions of the mark will be used in different countries, filing through the Madrid System might not be suitable.

• The specification of goods and/or services filed using the System must be IDENTICAL or if not, narrower than the specification of goods and/or services in the basic application. Protection is not extended to the mark when used on goods and/or services which are not included in the specification of goods and/or services in the basic application. This is an important point to consider if there will be additional or different goods and/or services that will be offered for sale in the designated countries.

If you have any questions regarding trademark registration via the Madrid System, or wish to obtain an estimated cost, feel free to call or email us.