The international trademark registration process under the Madrid System is an important, effective and highly regarded system for obtaining trademark rights in multiple international jurisdictions. As part of a robust trademark registration strategy, it enables brand owners to obtain protection in certain territories cost-effectively,

Marc Misthal, one of the Intellectual Property Attorneys in the U.S., once said, “It is best not to delay filing trademark applications abroad, particularly if you intend to be doing business abroad in the short term.”

The Madrid System is a one-stop solution for registering and managing trademarks worldwide. The Madrid System for the international registration of trademarks allows brand owners to apply and maintain protection in the different member states of the system via one single procedure, in one language and one set of fee.

Malaysia under the Madrid System

On 27 September 2019, Malaysia joined the Madrid Protocol and Starting from December 27th, 2019 local brand owners in Malaysia can begin using the Madrid System to protect their marks in more than 121 territories of the System’s members by filing a single international application and paying a single set of fees. With its straightforward designation process, foreign companies and trademark owners can, from December 2019, seek trademark protection through the Madrid System when selling their products and services in Malaysia.

How to use the Madrid System in Malaysia

The Applicants who are entitled to use the Madrid System in Malaysia are:

• citizens of Malaysia;
• bodies or corporations incorporated or constituted under the law of Malaysia;
• persons domiciled in Malaysia; or
• persons who have a real and effective industrial or commercial establishment in Malaysia.
• The Applicants must have already filed their application for registration or registered a mark in Malaysia. This Malaysia application or registration is referred to as the basic application or registration, or simply the basic mark. The mark that is the basis of an international application is either registered or has been applied for.

The basic mark and the international application must:

• have the same owner(s)
• be identical mark(s)
• have the same or a narrower list of goods and/or services.

An application can be based on a single basic mark or multiple identical basic marks covering different goods and services.

Advantages

• Same renewal deadlines for all countries in which your trademark was registered and managed under the Madrid System.

Why Registering Your Trademark Internationally?

If you are selling your products online, your products may reach global consumers more easily. When your product gain popularity in international markets, your brand may become more valuable. By registering your trademark in other countries, you may prevent others using an identical or similar name.

Further, there may be counterfeits of your products as you may have lost control of your brands being copied by others.