Malaysia’s Accession To The Madrid Protocol – 27 December 2019.

Prior to 27 December 2019, trade mark owners in Singapore who want to protect their trade marks in Malaysia would have to do so by filing national applications for their trade marks with the Malaysia Intellectual Property Office ("MyIPO").

With Malaysia’s accession, eligible applicants will be able to designate Malaysia as one of the designated countries in the international application. The Madrid Union currently has 106 members, covering 122 countries.

Comments

The Madrid Protocol offers a convenient and cost-effective solution for trade mark owners to expand brand protection into new markets. Trade marks can be registered and managed locally for the protection in multiple territories under the Madrid System. This will likely save time and cost of the trade mark owners in managing their global portfolio.

Furthermore, there is a definite examination period of either 12 or 18 months for IP offices to raise an objection to the trade mark application. In the absence of any such objection, the application will gain automatic protection.

However, the Madrid Protocol is not without its shortfalls. One disadvantage is the "central attack" where the rejection of a trade mark application in the home country within 5 years of the application date will result in the rejection of all applications in other territories that are based on that application.

Another limitation of the Madrid Protocol is the inability to transfer trade mark ownership to an owner who is not a resident in a member country without first withdrawing the trade marks from the Madrid System.