WRITTEN BY XUAN NGUYEN
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).
- 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.
- 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.
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.