Malaysia became the 106th member of the Madrid System as of the country’s accession to the Madrid Protocol international trademark system on the 27th September 2019 – marking a huge change for entrepreneurs and businesses with regards to trademark registration and protection in Malaysia. Through the Madrid Protocol, entrepreneurs and businesses will now be able to file a single trademark application to gain protection in select or all of the 120+ countries under the Madrid System.
How Can I Benefit From the Madrid System?
1. Potential protection range increases with every additional member country joining the Madrid System.
The Madrid System is advantageous for entrepreneurs or businesses looking to grow their global portfolios as the System has been poised for expansion and inclusion of new countries in its System since its establishment 30 years ago. WIPO states that the Madrid Union counted 25 members in 1998 and as of 2019, the number of members stand at 106. With 122 countries under the Madrid System, entrepreneurs and businesses are given the opportunity to seek trademark protection in global markets – according to WIPO, members in the Madrid Union represent more than 80% of the world trade. Under the circumstances WIPO welcomes new and additional member countries in joining the Madrid System, entrepreneurs and businesses are able to gain a greater geographical range of trademark protection.
2. Cost effective in registration & smoother administrative process.
A streamlined and cost-effective international trademark registration process is one of the Madrid System’s greatest strengths. The System requires a one application to be filed in one office, in one language and by paying one fee – meaning a single registration covers for as many national registrations the entrepreneur or business requires, as long as the country in question is included in the Madrid System. For entrepreneurs and businesses, this equates to a great reduction in filing time, energy and costs in comparison to applying for trademark protection individually in each country. The smoother administrative process in turn speeds up the process of registration and lowers the cost of registration due to the simplification of the trademark registration process – there is no need for translations, multiple representatives in designated countries or exchange expenses.
3. Easier management and potentially lower costs of renewal fees.
Marks recorded in the international register gain validity for 10 years and can be renewed every 10 years if the entrepreneur or business wishes to do so. Under the Madrid System, there is only a single renewal date and a single renewal fee. Hence, entrepreneurs and businesses benefit from simpler trademark portfolio management as there is no need to keep track of multiple renewal dates according to each designated country. Furthermore, entrepreneurs and businesses may end up paying less in renewal fees in comparison to paying individually to each designated country.
4. Post-registration procedures are simplified, centralised and cost-efficient.
Post-registration procedures, such as the change of trademark owner’s name and addresses, trademark assignments and renewals, are completed extensively via the Madrid System. Under the Madrid System, entrepreneurs and businesses would not need to carry out each of these procedures individually in each designated country. Furthermore, costs of such procedures are paid for once in a single fee, instead of to each designated country. Post-registrations costs, as a result, are expected to be lower. The Madrid System benefits entrepreneurs and businesses in terms of ease of managing portfolios, increased efficiency and decreased costs for post-registration procedures.
5. Definite period of 12 or 18 months for trademark office of designated country to determine validity of trademark registration.
The Madrid System guarantees that applications will be processed in a period of 12 or 18 months, depending on the designated office. This fixed and finite time period to determine the validity of the applicant’s trademark registration is an advantage for entrepreneurs and businesses as filings in certain designated countries may take up to time periods of more than 18 months for the validation of trademarks. Furthermore, the Madrid System ensures that the trademark will be protected automatically under the circumstances that there is an absence of any objections after 12 or 18 months.
For a full list of advantages of the Madrid System, please click here to access our page which contains further information.
Quality Oracle has 28 years of professional experience of international trademark registration. Get in touch to register and protect your trademark in Malaysia and worldwide via the Madrid System today.
Resources
- Madrid Protocol via WIPO