Madrid Protocol: Multi-country trade mark applications are on the horizon

 

One application = trade mark protection in multiple countries. It is only a matter of time before business owners can avail themselves of the harmonized process under the Madrid Protocol.

Malaysian business owners who want to expand beyond the country into other markets and to protect their trade mark in the process, would no doubt have been told that they would have to file separate applications in each country of interest. This would involve engaging the services of trade mark agents in the respective countries, and the costs and time involved in overseeing and coordinating the various applications would have added to the burden of expansion.

There is however, an alternative procedure available on the horizon, when Malaysia accedes to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”).

Under the Madrid Protocol, the business owner will be able to file an application with the Malaysian Intellectual Property Office (“Home Application”), and concurrently to designate other countries (who are also members of the Madrid Protocol) to which it would want to extend its trade mark application. The Home Application will go through the usual procedure for examination at the Malaysian Intellectual Property Office (MYIPO). Additionally, the international application will be forwarded on to the World Intellectual Property Office (WIPO) and then submitted to the member countries chosen by the business owner (“Designated Countries”). Note that a business owner with an existing trade mark registration, will also be able to avail itself of the Madrid Protocol.

In each of the Designated Countries, the application will go through the respective examination procedures in each country, and if all is in order, the mark can proceed to registration in the respective Designated Country. If the application receives an objection in any of the Designated Countries, such opposition will have to be dealt with separately in accordance with the procedure and laws of that country. At this point, local trade mark agents may have to be appointed to deal with the opposition.

Nonetheless, you can see that there is substantial benefit to this “one stop” process, as the application process and fees at the outset, are harmonized. Hence, with the filling of one application, a business owner can obtain protection in various countries, and the costs and headache of filing separate applications in each country of interest can be reduced.

Other factors to be taken into account is that the application for the Designated Countries must be in line with the scope of the Home Application. Business owners are advised to obtain professional advice, when the time comes, to ensure that their Madrid Protocol application is correctly drafted and lodged.

At this point Malaysia is still in the process of joining the Madrid Protocol and amending its laws for this purpose, however it is only a matter of time before Malaysian business owners will be able to reap the benefits of a multi-country trade mark application process.

 

 

CCLC Intellectual Property advises clients in licensing, franchising, distributorship and other commercial arrangements, and assists clients in all related matters from the drafting of commercial agreements to the registration of various intellectual property rights.