On 27th September 2019, Malaysia became the 106th member of the Madrid Protocol System, an international treaty devised to streamline the international trademark registration process, upon depositing the instrument of accession with the World Intellectual Property Organization (WIPO). This process allows trademark owners to gain protection of his or her trademark in up to 132 countries simultaneously through one application with a single office, in one language and by paying one fee.
It must be noted that the Madrid Protocol merely streamlines the application process but does not grant the trademark owner global trademark protection.
Trademark registration granted through the Madrid Protocol is valid for 10 years from the date of registration. Registrations are renewable at the end of each 10 year period.
The applicant, registered proprietor of the basic mark(s).
The applicant files their international application with the Office of origin.
WIPO issues the holder with a certificate of registration.
The Office of origin sends the international application to WIPO.
WIPO conducts a formal examination to ensure the application meets all requirements.
WIPO registers the mark in the International Register.
WIPO publishes the International Registration in the WIPO Gazette.
WIPO notifies the designated Contracting Parties.
The Office of origin reviews and certifies the international application.
Advantages
- 1
Expanding coverage
Protection range grows as more countries join the Madrid Protocol.
- 2
Smoother administrative process
Simplification of the registration process speeds up overall turnaround time.
- 3
Fixed examination period
Designated countries have a definite period of 12 or 18 months to determine the validity of a trademark. If no objections are raised within that period, the trademark is automatically protected.
- 4
Cost effective
No need for translation, hiring local representatives in designated countries, or handling currency exchange expenses.
- 5
Easier renewal management
Renewal fees are paid in one setting every 10 years, which is potentially more cost-effective than paying individually to each designated country.
- 6
5-year grace period for proof of use
Applicants are permitted 5 years of protection before being required to prove use of the trademark in countries where proof of use is a necessary filing requirement.
- 7
Convenient subsequent designations
Applicants can freely decide when to expand the scope of their trademark protection to new target countries at a later stage.
- 8
Simplified post-registration procedures
Changes such as holder name, address, ownership, or limitation of goods are centralised, reducing time and overall post-registration costs.
Disadvantages
- 1
Not available for non-member countries
Countries such as Hong Kong and Taiwan are ineligible, as they are not members of the Madrid Protocol.
- 2
Dependency on home registration
If the trademark registration in the home country (e.g. Malaysia) fails, the Madrid System application for all other designated countries will also not proceed. The applicant must have a registered or pending trademark to use the system.
- 3
Faster national routes in some countries
Certain countries complete their national trademark registration process in less than 12 months, making a direct national application potentially quicker.
- 4
Local agent costs may negate savings
If issues arise with the Madrid System application that require assistance from a local trademark agent, the monetary savings from using the system may be rendered void.
- 5
National applications may be cheaper for fewer countries
If an applicant only wishes to register in one or two countries, individual national applications and renewal fees may be more affordable.
- 6
Inconsistencies in protection
In certain countries, international trademarks registered via the Madrid System are not protected to the same extent as locally registered trademarks when it comes to disputes.
- 7
Limited flexibility in trademark use
The Madrid System does not allow flexibility in how trademarks are applied in each designated country, nor does it permit custom descriptions that may be more suitable for specific markets.
- 8
Ownership transfer restrictions
Transferring ownership of a Madrid System trademark to a resident of a non-member country is not permitted. The trademark must first be withdrawn from the Madrid System before such a transfer can take place.
Central attack risk
If your basic Malaysian mark is cancelled in the first five years, all designations under the international registration may fall with it.
Member countries only
Madrid protection is available only in Madrid Union member countries, currently 116 contracting parties covering 132+ countries.
Local refusals still possible
Each designated office may refuse your mark on its own grounds. Local agents may be required to respond.
Member states List of Madrid System Members
Have questions?
See common questions on international filing, costs, timelines and what happens if a designated country refuses your mark.
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