International Trademark Registration for Malaysian (Madrid System / Madrid Protocol)
Generally, trademark registration and protection are territorial in nature. In other words, if you have registered your trademark in Malaysia through the registrar (MyIPO), your trademark is only protected and recognised in Malaysia. In order for your trademark rights to be recognised and protected in a foreign country, you will have to register your trademark separately in that foreign country. This is because every country has its own set of regulations and laws governing intellectual property which are adapted according to the local customs and culture.
For instance, if you have business interest in or are planning to expand your business to Thailand, then you may want to also secure your trademark registration in Thailand (in addition to Malaysian trademark registration). Usually, for all trademark registration in a foreign country, a Malaysian IP agent will appoint its business associate (e.g. a Thai IP agent) to assist with the registration and to communicate with Thailand’s trademark registrar.
However, there has been a significant change to foreign trademark registration system since Malaysia’s accession to an International Trademark System called the Madrid System / Madrid Protocol in year 2019. So, what is the Madrid System and how does it benefit Malaysians who are looking to register their trademarks in foreign countries.
The Madrid System is an international system for facilitating the registration of trademarks in multiple countries around the world. This is pursuant to the multilateral treaty Madrid Agreement 1891 and the Protocol Relating to the Madrid Agreement 1989. The Madrid System is administered by the International Bureau of the World Intellectual Property Organization (WIPO). It provides for the international registration of trademarks by filing just one application that can cover more than one country. Starting 27 December 2019, Malaysian applicants can now utilize the Madrid System to protect their trademarks and obtain registration in any of the 121 countries (and counting).
What are the benefits of using the Madrid System for international trademark registration?
Cost-saving
Applicants are able to save substantial cost since there is no need to appoint a separate foreign IP agent in each of the foreign countries to handle the filing of the application. The filing of international application can be done through the Madrid System. There is no need to incur additional cost for translation of documents especially for countries such as Thailand, Japan and Korea. Applicants are able to save cost in maintaining the applications in case of renewal and changes in the application details.
It will give certainty to the costing since the Madrid System uses a standardized and transparent fee structure.
Time-saving
There is no need to prepare, separately, the required documents for each of the countries that you would like to register in. Applicants only need to fulfil one set of standard requirements. The registration process can be faster since we can now file foreign applications from the MyIPO directly. Through the Madrid System, applications are filed in one language and paying one set of fees in a single currency.
Easier maintenance
It can be quite challenging at times when handling multiple applications for multiple countries. Through the Madrid System, applicants can easily renew all their applications and make changes to their applications (e.g. change of name / address) concurrently with a single instruction.
What is the process of International Trademark Registration (Madrid System)? The MyIPO will act as an intermediary in handling foreign trademark registration. It will forward the applications to the WIPO for their checking on the formality requirements. Once the formality requirements have been fulfilled, WIPO will then forward the applications to the respective countries for substantive examination and registration. The flow is as shown below:
