Madrid Protocol

Madrid Protocol System

On 27th September 2019

Malaysia became the 106th member of the Madrid System

What Is the Madrid Protocol System?

The Madrid Protocol, regulated by the International Bureau of World Intellectual Property Organisation (WIPO), is an international treaty devised to streamline the international trademark registration process. This process allows trademark owners to gain protection of his or her trademark up to 120 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.


Advantages & Disadvantages of the Madrid System

AdvantagesDisadvantages
Potential protection range increases with every additional member country joining the Madrid Protocol.Madrid Protocol is ineligible for non-member countries (e.g. Hong Kong, Taiwan etc.)
Smoother administrative process which in turn speeds up process of registration due to the simplification of the trademark registration process.If registration of trademark in Malaysia fails, registration of trademark in other countries will not proceed by way of the Madrid System. Applicant can only use the Madrid System if their trademark is either registered or filed for registration.
Definite period of 12 or 18 months for trademark office of designated country to determine validity of trademark registration. In the absence of any objections after the time period stated above, the trademark will be protected automatically.National application in certain countries require time period of less than 12 months to complete the trademark registration process.
Cost effective in registration. No need for translation, hiring representatives in designated countries or exchange expenses.Issues with the Madrid System application requiring assistance of a local trademark agent will render the monetary savings by applying via the Madrid System void.
Easier management of renewal fees as the applicant is only required to pay in one setting every 10 years. Potentially more cost-effective in comparison to paying individually to each designated country.National application and/or renewal fees would be cheaper if the applicant only wishes to designate a lesser number of countries (e.g. one or two countries).
Applicant is permitted 5 years of protection before proving the use of trademark in countries where proving the use of trademark is a necessary requirement for filing a trademark.Madrid System has certain inconsistencies in certain countries whereby international trademarks are not protected to the same extent as their locally registered trademarks when it comes to disputes.
Convenience in applying for subsequent designations. Beneficial to owners as they will have the freedom to decide when to expand the scope of their business to new target countries.Madrid System does not allow flexibility in how trademarks are being used in each designated country, nor the changing of description of trademark where it’s potentially better to have custom descriptions in some countries.
Post-registration procedures (e.g. change in name of holder, address, ownership, limitation of list of goods. etc.) are simplified and centralised, which in turn decreases the time needed to effect change. Overall lower post-registration costs.Transferring ownership of trademark to a resident of a non-member country of the Madrid System is not allowed. The trademark will have to be withdrawn from the Madrid System before doing so.