Malaysia - To Madrid, Or Not To Madrid?

Legal News & Analysis - Asia Pacific - Malaysia - Intellectual Property

Asia Pacific Legal Updates

 

2 November, 2017

 

Malaysia - To Madrid, Or Not To Madrid?


IN THIS ARTICLE, AMEET KAUR PURBA ANALYSES THE MADRID PROTOCOL.
 
The Madrid Protocol (“Protocol”) is an international treaty administered by the International Bureau (“IB”) of the World Intellectual Property Organisation (“WIPO”), located in Geneva, Switzerland. There are currently 98 contracting nations to the Protocol including India, China, the United Kingdom and the United States[1]. 

To date, the Philippines, Singapore, Vietnam, Cambodia, Lao DPR and Brunei have acceded to the Protocol and Malaysia is in the process of amending theTrade Marks Act 1976 in order to accede to the Protocol[2].

The Protocol is a procedural multinational system that provides an additional route for trademark owners to obtain trademark registrations in numerous member countries by filing a single trademark application. Its objectives are two-fold: 

 

Firstly, it facilitates obtaining trademark protection.  

 

Secondly, it simplifies the subsequent management of the registered trademark[3].

 

This article briefly analyses both the key benefits and drawbacks of the Madrid Protocol that the trademark applicants or owners, who are desirous of obtaining trademark registrations in a number of countries, would need to consider before deciding whether to seek registration under the Madrid Protocol or via individual national registrations. 

How the Protocol works     

For the Protocol to apply, there must be a currently registered national trademark (“Basic Registration”), or a newly filed application for trademark registration (“Basic Application”) in a country that is a contracting party to the Protocol (“Office of Origin”). There must also be a connecting nexus through establishment, domicile or nationality between the applicant and the Office of Origin[4]. The Basic Registration/Application is followed by filing an International Application (“IA”) by the applicant at the Office of Origin[5].
 
The Office of Origin presents the IA to the IB to ensure adherence to the Protocol’s formalities. Where there are procedural irregularities, the IB will object to that IA. Once the irregularities are dealt with, the IB will convey the IA to the national trademark office of each country designated in the application for trademark protection. Each trademark office examines the IA according to their national trademark laws and must notify the IB within 12 to 18 months should they refuse the IA. If there are no objections, the IB will issue a statement of grant of protection. Objections to the IA are dealt with between the applicant and the national trademark office of the designated country concerned, without the IB’s involvement[6].          

Key benefits

The Protocol’s main advantage is that protection of a trademark in each designated country is the same as if the trademark registration had been applied for in the office of the designated country concerned[7]. The International Registration (“IR”) is therefore equivalent to a bundle of national registrations, although it stems from a single registration. Protection can be refused, limited or renounced with respect to only some of the designated countries, but the mark nonetheless remains protected in the other designated countries that did not object to the IR, unlike other unitary regional rights such as the Community Trade Mark [8].

 
Another benefit is the reduction of filing fees typically incurred when filing separate national applications in individual countries. Under the Protocol, the applicant is only required to pay one filing fee to the IB, instead of paying separate filing fees in each national registry office where a trademark application was filed. Trademark owners can also avoid incurring the costs of engaging a local agent from each designated country as there is no necessity to do so unless objections or oppositions are raised against the trademark application.
 
The post-registration stage is also made inexpensive and efficient as recordal of changes in names and addresses of the trademark owner, renewals and assignments are carried out centrally at the IB without filing fees having to be paid in each of the designated countries. Additionally, the renewal process of trademark registrations will be expedited and uncomplicated as the centralised renewal system at the IB allows trademark owners to avoid the varied renewal procedures required by the various national trademark offices[9].
 
A further advantage is that the applicant may proceed to file an IA whilst the corresponding national application at the Office of Origin, which is the Basic Application, is still pending. The Protocol therefore allows trademark owners to claim the filing date of the Basic Application as the priority date of the IA if the IA is filed within six months of the filing date of the Basic Application[10]. Thus the trademark owner or applicant would enjoy the benefit of the earlier filing date of the Basic Application as the effective filing date of the IA.
 
Drawbacks    

One of the disadvantages of the Protocol is the possibility of a “central attack”. For five years from the date of registration, the IR remains dependent on the Basic Application/Registration in the Office of Origin. If, during that time, the Basic Application is refused or withdrawn, or the Basic Registration is cancelled, or lapses, protection of the IR can no longer be invoked.
 
To counteract the IR’s vulnerability to central attacks, the Protocol allows the owner of an IR cancelled as the result of a central attack to register the mark as a national registration with the previously designated countries within three months of the cancellation date, which defeats the cost-saving advantage of the Protocol.
 
Another disadvantage is that the Protocol potentially causes trademark owners to incur additional costs should the IA be refused at the trademark offices of the designated countries which would then require the owner of the mark to appoint a local trademark agent in the relevant jurisdiction to handle the refusal[11]. Other limitations of the Madrid Protocol are that the goods and/or services applied for in the IR also cannot be broader than the Basic Registration. This may result in refusals due to the differing guidelines on classification of goods. Further, the IR is not transferrable to an entity based in a country that is not a contracting party of the Protocol. 
 
Conclusion: to Madrid or not to Madrid?  

Despite the drawbacks of the Protocol, trademark owners, especially those aiming to establish a global presence should consider the potential significant cost savings and uniformity offered under the Protocol.


[1] www.wipo.int/madrid/en/madrid_benefits.html
[2] ASEAN Intellectual Property Portal! available at www.aseanip.org/Services/Madrid-Protocol
[3] www.wipo.int/edocs/pubdocs/en/wipo_pub_418_2016.pdf
[4] ibid.
[5] ibid.
[6] ibid.
[7] www.ajpark.com/ip-central/special-topics/madrid-protocol/advantages-of-using-the-madrid-protocol/
[8] www.schnader.com/files/Publication/faf833b6-7add-4758-94db-f34a16a4b5ab/Preview/PublicationAttachment/bd85387c-d848-4c8f-b8ae-29ec2c3bf7f9/21pp_International%20Trademark

%20Registration%20Under%20the%20Madrid%20Protocol.pdf
[9] www.wipo.int/madrid/en/madrid_benefits.html
[10] www.schnader.com/files/Publication/faf833b6-7add-4758-94db-4a16a4b5ab/Preview/PublicationAttachment/bd85387c-d848-4c8f-b8ae-29ec2c3bf7f9/21pp_International%20Trademark%

20Registration%20Under%20the%20Madrid%20Protocol.pdf
[11] ibid.

 

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For further information, please contact:

 

Ameet Kaur Purba, Partner, Shearn Delamore & Co​

ameet@shearndelamore.com