Using the Madrid System to register your trade mark in Malaysia

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On 27 September 2019, Malaysia became the 106th member of the Madrid system upon depositing its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO). The protocol will enter into force in Malaysia on 27 December 2019, extending the Madrid System to cover 122 countries. With the addition of Malaysia, all the countries in the South-East Asian region, except Myanmar, are now members of the Madrid System.

After the protocol comes into force, foreign companies will have two options for registering their trade marks in Malaysia, i.e. filing a trade mark application directly with Malaysia’s IP office, or filing an international trade mark application with the IP office of their home country and selecting Malaysia as one of the designated countries. Before you decide which option is more convenient for you, we would like to provide an overview of the advantages and disadvantages of the Madrid System.

What is the Madrid System?

The Madrid System, administered by WIPO, is a convenient and cost-effective solution for registering and managing trade marks worldwide. The system allows brand owners to protect their trade marks in up to 122 countries by filing one application, using one language (English, French or Spanish) and paying one set of fees.

Under the Madrid System, you need to submit an international trade mark application with the office of the home country in which refers to the national application or registration in respect of the same trade mark and select the countries where you want to register your trade mark as designated countries. After receiving the international trade mark application, your office of origin will check, certify, and then submit it to WIPO. WIPO will examine your international application in term of formalities (e.g. the applicant’s name and address, the quality of the image of mark, the classification of goods/services according to the Nice Agreement, application fees, etc.). If your application meets all the formal requirements, WIPO will record the mark in the International Register, publish it in the WIPO Gazette of International Marks and notify all the IP offices in the designated countries so that these offices can begin the substantive examination of the application at a national level in their jurisdictions. A result concerning the protection or refusal of the trade mark will be made within the time limit of 12 months or 18 months (for certain countries).

Advantages

  • Centralised and simplified registration and management system

To have your trade mark protected in multiple countries, instead of going to each country to file your trade mark application, when using the Madrid System the applicant just needs to file one international trade mark application to the office of origin, using one language and paying a single set of fees. Any amendment, such as changes (name, address, ownership, etc.), cancellation or licenses can be recorded in the International Register by simply submitting one request. Likewise, when the trade mark registration is due for renewal, the trade mark holder can renew it with WIPO in respect of all the designated countries or only some of them.

Overall, the Madrid System enables the brand owners to register and manage their trade mark portfolio in multiple countries via a simplified and convenient system.

  • Cost-effective and time-saving

By filing only one application rather than various applications in various countries, the applicant can save time and money. For example, it is not necessary to pay for translations of the documents or local agent fees which are normally incurred if an application is filed directly with the IP offices of the target countries. In many countries, the examination of trade mark applications at the national level can take up to 4 years due to backlogs. Under the Madrid system, however, the designated offices have to decide within 12 months or 18 months.

  • Subsequent designation

The Madrid System allows trade mark holders to designate additional countries alongside their existing trade mark registration. This subsequent designation procedure is very beneficial to brand owners who want to expand their business scope to new markets as they do not need to file separate applications in the new target countries.

  • Global system

With the Madrid System, you can register and manage your trade marks in up to 122 countries, representing over 80% of world trade.

Disadvantages

  • Central attack

Under the Madrid System, international registration remains dependent on the  basic application/registration in the country of origin for a period of 5 years from the date of its registration. Therefore, if the national application is rejected or withdrawn, or if the the national registration is canceled during this period, the international registration will no longer be protected unless within 3 months of the cancellation, the holder files trade mark applications for registration with the offices in each of the designated countries.

  • Refusal by national office

Laws and practices differ from country to country. It is still possible that you receive a refusal decision from some of the designated countries. In this case, the holder cannot communicate through the International Bureau but has to directly respond to and work with the national offices where the protection is rejected. In some countries, it is mandatory to use a representative agency to respond to the national office. Refusals may be avoided if, before filing, the trade mark holder identifies the countries in which rejection is likely and consults a local lawyer with expertise on the topic in order to develop a registration strategy.

Summary

Thanks to its centralised and simplified registration and management procedures, the Madrid System is a convenient solution for brand owners to protect their trade marks when doing business internationally. Nevertheless, brand owners should consult with local lawyers to develop trade mark registration strategies in certain countries where there is a high possibility of refusal by the national office.

The Importance of Voluntary Copyright Registration in Malaysia: A Case Study

shutterstock_176603774In today’s blog post we will be taking a closer look at the Copyright registration in Malaysia. The article demonstrates through case study the importance of voluntary copyright registration in Malaysia 

Copyright in Malaysia

Copyright in Malaysia protects literary, artistic, musical and dramatic works. Copyright also protects sound recordings, published editions, films, broadcasts and performer’s rights. Copyright ownership could be held either by the author, his employer or the person who commissions the work.

It must be noted that an author retains the right to have his name identified as the author of the work based on what is called a moral right. The author also has the moral right against the distortion, mutilation or other modification of his or her work. Ownership of copyright entails an exclusive right to commercially exploit the work. A classic example of commercializing a copyrighted work is the distribution of copies of the work for sale. We can see this in traditional commerce such as books and compact discs. As an intangible property, copyright can also be licensed or assigned to third parties for royalties. When licensing, it is important to determine the extent of copyright use that is permitted.

In Malaysia, copyright exists as soon as the original work is created and belongs to the creator of the work automatically. There is no formal requirement for the work to be registered in order for copyright to be claimed or recognized, however a copyright owner may voluntarily register their copyright in Malaysia. Registration is still advisable for foreign SMEs as the registration can be extremely useful in enforcement proceedings as evidence of your ownership. To claim copyright ownership (i.e. to forewarn infringement), a notice with the symbol © may also be placed in/on the work followed by the name of the owner and the year of first publication. Continue reading “The Importance of Voluntary Copyright Registration in Malaysia: A Case Study” »

IP Protection in Malaysia for the Medical Device and Healthcare Industries

insurance-1991276_1920In today’s blog post we are taking a closer look at IP protection in the medical device and healthcare industries in Malaysia. You will learn more about the importance of patents in medical device industry and the various patents that can be applied in Malaysia as well as about the importance of brand protection. 

As one of the main pillars of Malaysia’s economy, supported by numerous governmental initiatives, medical device and healthcare industry is growing fast in Malaysia, making the country one of the top destinations for medical tourism. Healthcare industry in Malaysia is expected to grow close to 30% per year up to 2020[1] and as Malaysian government is creating various incentives for foreign investments, this sector is expected to offer many promising business opportunities for European SMEs.

Malaysia has a large ageing population with rising disposable income and European SMEs can find business opportunities in many sectors including elderly care. As digitalization is still one of the challenges in Malaysia’s medical device and healthcare sector and since the government is encouraging the implementation of the E-Health Strategy, European high-tech solutions are much welcome in Malaysia. Furthermore, as Malaysia’s population is becoming increasingly affluent, consumers pay a lot of attention to wellness and disease preventions, meaning that there is growing market for medical devices that are used to self-monitor one’s health condition like blood glucose and pressure monitors[2].

European SMEs wishing to do business in Malaysia’s healthcare and medical device sector should pay attention to protecting their intellectual property rights, because even though Malaysia’s IP regulations have improved over the past years, counterfeiting and other IP violations are still commonplace in the country. At the same time, neglecting to protect IP rights can often quickly end European SMEs’ business endeavors in South-East Asia. Continue reading “IP Protection in Malaysia for the Medical Device and Healthcare Industries” »

IP Protection for the ICT Industry in Malaysia

board-453758_1920In today’s blog post we are discussing IP protection in Malaysia’s ICT industry, which has recently been offering many promising business opportunities for the European SMEs. You’ll  learn more about patent and design protection and how to ensure that your brand is safe from counterfeiting. 

Malaysia has a booming ICT industry with the ICT sector being forecasted to contribute about 20% to the country’s GDP by 2020.[1] The ICT sector is being further supported by Malaysian government that has taken special interest in developing the Internet of Things (IoT) and cloud computing. The government namely hopes that adoption of cloud computing and building on the National Broadband Initiative, would accelerate Malaysia’s development into an advanced economy[2].

As the government is investing heavily into ICT- related projects like developing smart city infrastructure or strengthening cybersecurity, the ICT sector will offer many promising business opportunities for the European SMEs whose top-notch technology and know-how are highly sought after through encouragement of foreign investments in the ICT sector.

European ICT companies should, however, pay attention to protecting their IP rights when planning their business strategy for Malaysia’s market, because IP infringements are still relatively common in the country. Well-managed IP is often a key factor for business success and neglecting to register IP rights in Malaysia could easily end SMEs’ business endeavor in the country. Thus, a robust IPR strategy is needed, when entering Malaysia’s market. Continue reading “IP Protection for the ICT Industry in Malaysia” »