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.

Trademark Law Revision in China: analysis of the new provisions

On 23 April 2019 the Standing Committee of the National People’s Congress issued the fourth revision of the Trademark Law, which came into force on November 1st. This has attracted much attention from the international IP community as it addresses the issue of bad-faith registrations – one of the most significant challenges to protecting international brands in China.

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The new law provides that bad-faith applications made with no intent to use will be rejected. In addition, the absence of requisite intent to use is now included as grounds for opposition and invalidation proceedings.

Moreover, the law allows for a higher amount of damages that can be claimed for trademark infringement; likewise, the highest amount of statutory damages was increased from RMB 3 million to RMB 5 million in an attempt to deter infringements.

The revision also establishes new guidelines for the Trial of Cases on Trademark Authorisation and Affirmation, as well as new articles on the legal liability of applicants of bad-faith application without intent to use.

For the full analysis on the recent revision, read the full article by Charles Feng at Lexology.

WIPO Launches New Publication Series; China is First Contributor

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The World Intellectual Property Organization has published the first edition in a new publication series collecting landmark intellectual property (IP) judgments from some of the most dynamic litigation jurisdictions around the world.

The “WIPO Collection of Leading Judgments on Intellectual Property” series aims to illustrate IP adjudication approaches and trends, by jurisdiction or theme in each volume.

The first title is a joint publication with the Supreme People’s Court (SPC) of the People’s Republic of China. It features 30 representative judgments rendered by the SPC between 2011 and 2018, presented in both Chinese and English. These decisions, selected by the SPC, exemplify recent judicial adjudication in the areas of copyright, trademarks, patents, trade secrets, new plant varieties, integrated circuit layout designs, monopoly and competition, and criminal enforcement of IP rights.

The publication is part of WIPO’s efforts in the area of the judicial administration of IP, led by the WIPO Judicial Institute, to engage judges from around the world as they share experiences on the common challenges they face and discuss new subject matters and concepts.

Continue reading on the WIPO’s website.

Baby products brand Beaba sues copycats for using ‘BEABA’ logo on baby diapers

Beaba, a famous baby products brand, recently filed before the Hangzhou Internet Court a civil action for copyright infringement and unfair competition action against four defendants for their unlawful use of Beaba’s special-designed logo “BEABA” on the latter’s baby diaper products.

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In said action, Beaba claims that it has been producing baby feeding and baby food preparation products since its establishment in 1989 in France, and had entered the Chinese market since 2010. Since its establishment, Beaba has originally created and has used the special-designed logo “BEABA” on their baby products, and therefore enjoys the copyright over the same. Meanwhile, Beaba’s special-designed logo “BEABA” and its enterprise name “Beaba” has gained a high degree of popularity and reputation.

Beaba claims that, without their authorization, four Chinese companies have sold baby diaper products bearing the “BEABA” logo.

Given this, Beaba filed an action for copyright infringement and unfair competition before the Hangzhou Internet Court alleging that, the defendants’ unauthorized use of the “BEABA” logo which is identical or highly similar to Beaba’s logo on baby diaper has infringed Beaba’s copyright. Moreover, as Beaba’s enterprise name “Beaba” has gained a high degree of popularity and reputation, such enterprise name should be protected under Article 6 of the Unfair Competition Law, and the defendants’ use of the characters “BEABA” may mislead the public, thereby amounting to unfair competition in accordance with Article 6 of the Unfair Competition Law. Beaba likewise demands that the defendants cease and desist from their infringing activity and to pay RMB 3 million in damages. Continue reading “Baby products brand Beaba sues copycats for using ‘BEABA’ logo on baby diapers” »

OEM Manufacturing and Trademark Infringement in China

“Made in China 2025” policy forced Supreme People’s Court to Change Direction on OEM Manufacturing Exception to Trademark Infringement

Introduction

For years Western companies have relied on Chinese factories to manufacture their products at low cost and export them back to other markets to be sold with high margin of profit. This is normally referred to as OEM manufacturing, where OEM stands for Original Equipment Manufacturer. This was for decades the main business model for China’s industrial and economic development and it earned China the nickname of “World’s Factory”. In recent years, things have changed. China is now a market with hundreds of millions of consumers buying foreign products online or traveling and shopping abroad, while cheap manufacturing is moving elsewhere to be replaced by High-Tech businesses. In this evolving socio-economic landscape, OEM manufacturing has lost its prior standing in the government policies. China is now projected towards a further integration of its economy into the global capital system. Aside from the already renown “Belt & Road” initiative, China has recently launched “Made in China 2025”, a new grand plan to showcase China’s own brands and industries to the world and move away from being the world’s “factory” to an economy producing higher value products and services.

This policy change embodied in the “Made in China 2025” program, is also reflected in the recent legal developments concerning the relation between OEM manufacturing and trademark infringement. This article will explore the evolution of such relation and will comment on the most recent leading decision on this topic issued by the Supreme People’s Court this October 2019.

Continue reading “OEM Manufacturing and Trademark Infringement in China” »