Just 2 years ago, Malaysia finally had deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO), paving the way for the long-awaited implementation of the Madrid Protocol in the Malaysian Trademark system. Madrid Protocol is an international treaty administered by the WIPO which governs the system of IR of Trademarks. Briefly, it’s an international Trademark (IR) System for Trademark holders to protect and manage their Trademarks from multiple markets.
How does the Madrid System work?
As the Protocol has entered its enforcement in Malaysia, the new Trademark Act 2019 has also changed the scope of infringement, invalidation and revocation by the Registrar and provided for new criminal offences which s ensures its compliance with the Protocol.
Within the Madrid System, Trademark owner may protect and manage their Trademarks from over 126 countries by a single international application which is less hustle in term of international bureaucracy and a cost effective. Trademarks are also able to be applied for a subsequent designation while extend the protection to Malaysia.
Most of the time, it can be quite inundated because IR could be one fraught with difficulties if one is not strategic about the Madrid system. As far as cost savings are concerned, the type of marks, the countries that will be designated and the number or classification remain as important factors to be considered. Trademark owner must also bear in mind upon the principle of central attack and the fact that their Trademark will only be examined substantively after publication in WIPO’s gazette by the local offices of each designated country. Should you be keen to know more about Madrid Protocol applications, we are here to guide you.
Prerequisites to obtain International Trademark
Before getting an International Trademark in Malaysia the most important prerequisites are as follows:
• The applicant must be a citizen of Malaysia,
• Owns a body or corporation incorporated or constituted under the law of Malaysia, or
• The applicant is domiciled in Malaysia, and
• Has a real and effective industrial or commercial establishment in Malaysia.
• To file an international application, the applicant must already filed an application for basic mark registration or registered a mark in Malaysia.
• The basic mark and the international application must have the same owner, be identical mark and have the same a narrower list of goods and services.
• Only single application required
• Can be made from the office of origin
• One set of fees payment in a single currency without have to pay separately in offices of the various contracting parties.
• Using one language
• Refusal will be notified via email within a Provisional Refusal
• When Trademark is registered, Statement of Grant (SOG) will be granted without have to wait.
• Only a simple procedural steps required upon any changes subsequent to registration.
• Only one expiry date and only single way of registration to renew while allows to expand a global Trademark portfolios using a single unified database.
FAQ : How do I ….
• Monitor the status
→Madrid Monitor will assist you to follow up with the status of your international application or Trademark registration, access detailed information on all Trademarks registered through Madrid System and keep an eye on competitors’ Trademark.
• Add Subsequent Designation
→To add additional countries/regions to your existing international Trademark registration, the request of your subsequent designation can be submitted through online or use Form MM.
• Changes in ownership of IR : Assignment or Amend
→In order to be fully entitled with IR or part in, a new owner (the transferee) must have a business or domicile in a Contracting Party’s country which is a member of Madrid System
→Or the owner’s nationality is based in the Contracting Party.
→The request can be submitted to WIPO through online/mail, through the Office of the Contracting Party of the recorded (holder) or through the Office of the Contracting Party of the new owner (transferee)
• Manage your IR : Limitations / Cancellations
→To fully remove or cancel some of the goods and services in respect of all the designated Contracting Parties in your international registration, the applicant may submit directly to WIPO or through the Office of Contracting Party of the holder.
→The simplest way to request a limitation of your IR is through online in the IP Portal. Alternatively, the form can be submitted directly to WIPO through the Office of Contracting Party of the holder.
• Respond to Provisional Refusal
→It takes up 6 to 12monthsto grant or refuse protection and the applicant will be notified with Provisional Refusal through Madrid Monitor.
→Softcopy of IR certificate
→Statement of Grant for each designated countries
→Renewal can be made in single application specifically through Madrid Calculator
This article is brought to you by Exy Intellectual Property Sdn Bhd.