Member Article

It won’t be long before Malaysia becomes a party to the Madrid Protocol with strong indicationspointing towards Malaysia acceding to this treaty by 2013. The Madrid Protocol system, which is a global trademark registration system is administered centrally by the International Bureau of the WorldIntellectual Property Organisation (WIPO), located in Geneva, Switzerland. Amendments to the Trade Mark legislation are also expected to be made in order to incorporate provisions for the accession to the Madrid Protocol.

The Madrid system is a purely procedural system which allows trademark owners to obtain registrations in a wide number of member countries by filing a single application, using one language and one set of fees. Although the Madrid Protocol system provides a centralized filing system for internationalregistrations, the substantive examination of each trademark application will still be handled by therespective Trademark Registries in the countries in which registration is sought.

Besides using the traditional national filing route to register trademarks in each country of interest and/or the regional route which provides protection to members’ countries of a particular regional trademarkregistration system eg. The Community Trademark system, the Madrid Protocol system provides an alternative or if not an additional route f or trademark owners to obtain trademark registrationsinternationally.

Whilst the accession to the Madrid Protocol would benefit Malaysian companies seeking international registrations and at the same time can benefit international businesses wishing to seek trademark protection in Malaysia, it is worthwhile f or trademarks owners to review their global trademark protection strategy before contemplating use of the Madrid Protocol system as part of theirtrademark filing strategy.