Shearn Delamore & Co. Legal Update July 2020 (Intellectual Property) 

International Filings via Madrid Protocol

On 27 December 2019, Malaysia acceded to the Madrid Protocol, opening Malaysia up to the international trademark filing system. Parallel to the accession, as many are aware, the new Trademarks Act 2019 also came into force on the same date, establishing, amongst others, the law and practical guidelines for the international filing system.

With over 1.3 million trademarks registered, the Madrid Protocol is one of the most powerful tools for brand owners who are expanding their business beyond borders and to those who are exporting their products overseas.

For those unaware of Madrid Protocol and its benefits, the Madrid Protocol is basically an international filing system which allows a trademark owner to seek protection of his or her trademark in several countries simultaneously by filing one application at a single home office.

Fees and handling of such an application will also be through the home office, reducing the need for multiple counsels or agents in the countries of interest or even the need to comply with diverse country-specific filing requirements.

The Madrid Protocol, in short, is a centralised one-stop solution for brand owners who wish to protect their trademarks in multiple member countries in the most cost-effective way.

The benefits aside, so how has the Madrid Protocol system fared in Malaysia since our accession?

The Intellectual Property Corporation of Malaysia (“MyIPO”) says that as at February 2020, 16 applications have been received from Malaysian companies under the Madrid Protocol, designating various member countries.

Inbound wise, as at February 2020, 451 international trademark applications have designated or subsequently designated Malaysia. Evidently, Malaysia is an important market for international companies that appear to be taking good advantage of this system by expanding their trademark protection to Malaysia.

Malaysian companies, on the other hand, appear to be catching up as well. With the Malaysian economy gradually recovering post-Movement Control Order, more local companies may start seeing the need to file international trademark applications before they enter foreign markets.

For further information regarding intellectual property law matters, please contact our Intellectual Property Practice Group.



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