Joyce Tan summarises the international treaty which will allow trademark owners to seek trademark protection in several countries through a single application.

With the recent passing of the Trademarks Bill 2019 by the Malaysian Parliament, brand owners with international presence or intending to expand internationally will be delighted to know that Malaysia is one step closer to acceding to the Madrid Protocol. While a date has yet to be announced, and notwithstanding possible further delays, it is currently expected that the provisions on Madrid Protocol will be coming into force in early 2020. Before opting for this international filing system, it is important to understand the key features of the system and weigh the benefits against the disadvantages of the Madrid Protocol.&

What is the Madrid Protocol?

The Madrid Protocol is an international treaty administered by the World Intellectual Property Organization (WIPO) which governs the system of international registration of trademarks known as “the Madrid System”. The Madrid System allows trademark owners to seek registration of their trademarks in multiple designated member countries by filing a single international application with WIPO through a single trademark office. This allows trademark owners to manage their portfolios through a centralised system and easily expand protection into new markets. The resulting “international registration” is equivalent to a bundle of national registrations in the member countries that the applicant chooses to designate. Currently, there are 105 members covering 121 countries under the Madrid Protocol. A full list can be found here. Once Malaysia accedes to the Madrid Protocol, Myanmar will be the last remaining ASEAN country which has yet to be a member.

Basic Requirements – Who may use the Madrid System?

• An individual or legal entity that has real and effective industrial or commercial establishment in a member country of the Madrid Protocol.
• The relevant mark upon which the international application will be based on must have been registered or applied for at the IP Office in the country of origin (“basic mark”). This office is referred to as the “Office of Origin” and would be MyIPO in the case of Malaysia.

Stage 1 – Application through Office of Origin

International applications are filed with the Office of Origin and must be for the same mark and same or more limited goods/services as covered by the basic mark. The applicant may designate as many member countries where it desires to seek protection. The Office of Origin will certify the international application and forward the same to WIPO.

Stage 2 – Formal Examination by WIPO

WIPO only conducts a formalities examination on the international application. Once approved, the mark will be recorded in the International Register and published in the Gazette of International Marks. WIPO will then issue a certificate for the international registration and notify the respective national IP Offices of the designated member countries.

Stage 3 – Substantive Examination by the National IP Office of the Designated Member Countries

The national IP Office of the designated member countries will examine the international registration against their respective domestic legislations. They must then make a decision whether to grant or refuse the protection within the applicable time limit (12 or 18 months), failing which the trademark is automatically protected in that member country. WIPO will thereafter record the respective decisions of the IP Offices in the International Register and notify the applicant.

Duration of Protection

An international registration is effective for 10 years and renewable every 10 years. An international registration may be renewed in respect of all or any of the designated member countries.  

Advantages

• Ease of filing as single application is in one language.
• Considerable cost savings as applicant only pays one set of fees in one currency for multiple designated member countries without incurring additional foreign agent appointment fees, translation fees, and other expenses associated with the formalities of filing separate national applications.
• The mark is protected if no refusal notice is issued by the national IP Office within the time limit.
• Centralised maintenance to file renewals, change of address, ownership etc. across all designated territories.
• Protection can be extended to more member countries not covered by the international registration by filing subsequent designations. This allows the owner to expand the geographical scope of the protection of its mark in line with its business needs.
• International registration becomes independent of its basic mark after 5 years.

Disadvantages

• Not every country is part of the Madrid Protocol.
• International applications cannot be amended post filing. This disallows the possibility of having different marks in different countries which may be required of applicants with different branding across country markets.
• Dependent and tied to the basic mark for the first 5 years.
  • This can lead to a problem of a “central attack” whereby if the basic mark ceases to have effect, whether through refusal, cancellation, or becomes invalid within the 5 year period, the associated international registration will be affected accordingly.
  • In the event of a central attack, the applicant may transform the international registration into separate national applications if it applies directly with each designated member country within 3 months from the date of cancellation of the international registration. Additional unplanned fees will however have to be incurred and foreign agents will have to be appointed. This may result in higher costs than opting for a direct national application in the first place.
• Necessary to appoint local trademark agent to address issues arising during substantive examination e.g. objection, refusal, opposition etc. This will incur additional fees.
• Scope of goods/services is limited to the international registration for subsequent designations.
• International registrations can only be assigned to a party who is an individual or legal entity that has effective commercial establishment in one of the member countries under the Madrid Protocol.

Risk Management & Filing Strategies

• Before filing the basic mark in the office of origin, conduct full availability searches to determine if the trademark is available for use and registration. Before filing an international application, conduct at least identical searches on the International Register and the trademark register of each of the countries of interest.
• Madrid System is most suitable for highly distinctive trademarks. Trademarks which are descriptive or generic are likely to result in objections by IP Offices, thereby eliminating the cost saving advantage of the system.
• Wait for the basic mark to be registered before filing an international application to lower the risk of central attacks.
• For applicants with operations in multiple Madrid Protocol countries, consider utilising an office of origin which allows for a broader description of goods/services for the basic mark.
• Certain countries require use to register a trademark or to maintain such registration. Non-use of a mark may also be a ground for cancellation in some countries. Check on such requirements prior to filing and maintain records of use accordingly.