Knowledge & News

Malaysia becomes latest country to join the Madrid Protocol

22 November 2019

The Government of Malaysia has announced the country’s accession to the Madrid Protocol international trade mark system, making it the 106th member of the system that now covers 122 countries around the world. The news that Malaysia is joining the Madrid Protocol follows the recent accession of both Brazil and Canada to the system.

Malaysia’s adoption of the Madrid Protocol means businesses and entrepreneurs across Malaysia will now have the ability to file a single trade mark application to secure protection in some or all of the 122 countries covered by the system.

A Madrid Protocol trade mark registration which has been granted protection in each of the countries designated gives that trade mark validity and enforceability in those countries equivalent to a national registration, offering trade mark owners huge geographical coverage for their trade mark for a relatively small fee and without the inconvenience of having to file the trade mark individually in each country. Now Malaysian applicants will be able to file one application and pay one set of fees to obtain an international registration (IR) in multiple territories around the world.

After an IR is obtained, any subsequent changes to that registration can be recorded by means of a single request. There is also a benefit associated with the fact that there is only one registration to renew - an IR may be renewed every ten years with the payment of only one fee. If a trade mark owner holds an international registration which covers many countries, this can reduce the administrative requirements for portfolio management.

Malaysia’s accession to the Madrid Protocol also means that trade mark owners in the UK, and in other signatory countries, will now be able to protect their trade marks in Malaysia more easily. The Protocol will enter into force for Malaysia on December 27, 2019.

For further information regarding filing trade marks via the Madrid Protocol please contact our team in either the UK or Malaysia.

Authors

Gerald Samuel

Gerald Samuel Director Kuala Lumpur (Malaysia) Advocate and Solicitor (MY) at Messrs Gerald Samuel, Advocate and Solicitor (SG) at Messrs Eldan Law

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