Malaysia and the Madrid System: Are We There Yet?
12 October 2012
The Madrid System for the International Registration of Marks was established under the Madrid Agreement in 1891. Administered by the International Bureau of WIPO located in Geneva, the system offers a simple, cost-effective alternative to obtaining trademark registrations in other countries via what are known as ‘direct national filings.’
In recent decades, as the world’s technologies have advanced in leaps and bounds, the intellectual property system has never faced a greater challenge in preserving exclusive rights to owners for their intellectual creations.
Insofar as trademark rights are concerned, brand and trademark owners have always been confronted and perplexed by the numerous trademark practices that vary from country to country. Trademark rights have always been territorial in nature, but with the fast-paced globalization of the world, it was obvious that the process of trademark registration ought to be made easier for trademark owners wherever they may be.
Enter the Madrid Protocol. The Protocol was introduced almost 100 years after the Madrid Agreement and with it came new features which removed the difficulties that were inherent in the Madrid Agreement. The Protocol has been in force since April 1, 1996.
In Malaysia, in a National Seminar on Madrid Protocol jointly organized by the Ministry of Domestic Trade, Co-Operatives and Consumerism, the Malaysian Intellectual Property Office (MyIPO) and WIPO on October 17-18, 2011, there were strong indications that the Government will accede by 2013, ahead of its 2015 obligation under the ASEAN Economic Community.
Nevertheless, there is a lot of work required before the above can come into being. For one, changes to the Trade Marks Act 1976 must be made and these must be passed by Parliament with accompanying Regulations. To this end, the Malaysian Government already has drafted amendments to the Trade Marks Act, which include provisions for acceding to the Madrid Protocol.
Secondly, MyIPO must make significant improvements in terms of upgrading its infrastructure – particularly its ICT capabilities – so as to cope with the incoming international filings. Human resources ought to receive proper training and backlogs should ideally be cleared. Continuous public consultation, both with the industry’s practitioners as well as the public would also be most welcomed, in part to educate the latter and for the former, to allay their concerns.
For the first nine months of 2011, filing statistics show that MyIPO has received more than 20,000 trademark applications. More of interest is the fact that for the past few years, there is a trend showing that the total number of applications filed by Malaysian individuals and companies seem to equal the total number of applications filed by foreigners. This is a healthy indicator that more and more local businesses and small- and mediumsized enterprises are becoming aware of the importance of securing intellectual property protection for their business assets.
It cannot be denied that once Malaysia accedes to the Madrid Protocol, Malaysian businesses will have the opportunity to expand their trademark protection across 80 member countries. This in turn will facilitate growth and trade for Malaysian businesses. In addition, there is a huge potential to develop their export markets.
Having said that, it must be remembered that the comparative ease of filing under the Madrid Protocol does not necessarily mean applications will automatically translate into registrations. After designating countries of choice, a Malaysian applicant must choose whether or not they wish to continue with the application in each designated country and once they do, the application reverts to a home application, subject to each country’s rules and practice. This means that prior to utilizing the Madrid Protocol registration system a Malaysian business must obtain proper and comprehensive advice with regards to their global IP protection policies in order to ensure successful registration whilst enjoying the reduced costs afforded by the Madrid Protocol. Ideally, this should be in line with its business activities.
To summarize, change may not be a bad thing, but from this writer’s point of view, the road ahead leading to a successful accession and implementation of the Madrid Protocol will, in all probability, be an exciting and challenging one for those concerned.
Henry Goh & Co
House of Henry Goh,
217 Jalan Imbi,
55100 Kuala Lumpur, Malaysia
T: +60 3 2118 8688
F: +60 3 2118 8777
E: hgoh_kl@henrygoh.com
W: www.henrygoh.com
