HOW TO REGISTER MY TRADEMARK, LOGO/ BRAND ABROAD?
Malaysian businesses have been able to register their trademarks internationally in 130 countries[1] since Malaysia became part of the Madrid Protocol System administered by the World Intellectual Property Organisation (WIPO)[2]. The application for trademark registration abroad by Malaysian businesses is not difficult but adherence to the requirements and procedures stipulated is crucial to reduce lengthy delays in the completion of an application, due to remedying irregularities and/or mistakes in the applications.
Requirements to Register an International Mark
There are two prior requirements for an applicant to register an international trademark from Malaysia. Firstly, the applicant must be of Malaysian nationality, a body or corporation incorporated or constituted under Malaysian law, a person of Malaysian domicile or a person with a real and effective industrial or commercial establishment in Malaysia[3]. Secondly, the applicant must have filed a registration application or have a registered mark/basic mark in Malaysia wherein the international application shall have the same owner(s), be of identical mark(s) and have the same or a narrower list of goods and/or services as the application in Malaysia[4].
International Trademark Registration Under Madrid Protocol Process
Upon the fulfilment of the abovesaid requirements, the applicant can then proceed to apply for registration of a trademark by filling up an application form for international registration under the Madrid Protocol through Madrid Application Assistant and printing out the completed application in PDF format[5] and also filling the form for handling fee of international trademark registration which is downloadable from the Malaysian Intellectual Property Organisation (MyIPO) website[6].
Fees
After that, the applicant must submit the completed forms with the International Bureau through MyIPO together with prescribed fees being handling fees charged by MyIPO for each application and fees to be paid to WIPO directly. Fees to be paid to WIPO may be different depending on whether it is a black and white reproduction of the mark or coloured reproduction of the mark and the designated country(ies). Fees to be paid to WIPO shall be paid by way of current account at WIPO, credit card, bank or postal transfer[7].
Timeline
Upon submission and payment of all the applications, MyIPO will review and certify the international application followed by sending the international application to WIPO which will then conduct a formal examination to ensure all requirements are met for the application[8]. If there is an irregularity and/or mistake, WIPO will issue an irregularity notice and MyIPO shall remedy the irregularity within 3 months[9]. The duration from the filing of international application to the said formal examination will be approximately 2 months (only if there is no irregularity and/or mistake). Upon confirming all requirements are conformed, WIPO then registers the mark in the International Register, notifies the designated countries the trademark is intended to be protected at designated Contracting Parties (DCP), publishes the International Registration in the WIPO Gazette and issues the holder (the applicant) with a certificate of registration.
Where there is no rejection for protection of the applicant’s trademark by the DCP within a prescribed time limit (12 months, 18 months, or slightly longer than 18 months if opposed by a third party), or refusal (if any) has been subsequently withdrawn, the applicant’s mark shall be protected in that DCP for 10 years from the date of international registration[10]. Thereafter, renewal of the applicant’s international trademark can be done every 10 years (at the earliest 3 months before the expiry of 10-year term or within 6 months after the expiry)[11].
Please reach out to Ng Law should you need any help with your trademark registration at +601154304970 or penang@nglaw.com.my.
[1] WIPO, “Madrid Agreement Concerning the International Registration of Marks and Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks Status on February 6, 2023”, Last modified (n.d.), Accessed on March 3, 2023, https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf.
[2] The Official Portal of Intellectual Property Corporation of Malaysia (MyIPO), “Malaysia Accedes to Madrid Protocol”, Last modified (n.d.), Accessed on March 3, 2023, https://www.myipo.gov.my/en/malaysia-accedes-to-madrid-protocol/.
[3] The Official Portal of Intellectual Property Corporation of Malaysia (MyIPO), “Madrid- The International Trademark System”, Last modified (n.d.), Accessed on March 3, 2023, https://www.myipo.gov.my/en/madrid-system/.
[4] Ibid.
[5] WIPO IP Portal, “Madrid Application Assistant, Complete Your International Application Online”, Last modified (n.d.), Accessed on March 3, 2023, https://efiling.madrid.wipo.int/application-assistant/home.xhtml.
[6] The Official Portal of Intellectual Property Corporation of Malaysia (MyIPO), “Trademarks Forms & Fees (Trademark Act 2019)”, Last modified (n.d.), Accessed on March 3, 2023, https://www.myipo.gov.my/en/trade-marks-form-fees/# .
[7] World Intellectual Property Organization (WIPO), “Fees and Payments – Madrid System”, Last modified (n.d.), Accessed on March 3, 2023, https://www.wipo.int/finance/en/madrid.html#:~:text=There%20are%20four%20ways%20to,transfer%20(within%20Europe%20only).&text=There%20are%20three%20ways%20to,a%20written%20debit%20request%3B%20or.
[8] The Official Portal of Intellectual Property Corporation of Malaysia (MyIPO), “Madrid- The International Trademark System”, Last modified (n.d.), Accessed on March 3, 2023, https://www.myipo.gov.my/en/madrid-system/.
[9] ARISE + ASEAN Intellectual Property Rights (IPR), “A practical guide on international trademark protection for Malaysian entrepreneurs, The Madrid Protocol- A Route to Global Branding”, Last modified (n.d.), pg. 20, Accessed on March 3, 2023, https://drive.google.com/file/d/1Kw2_HspHbMNRkre6c848E-GBxW7rwkpg/view.
[10] ARISE + ASEAN Intellectual Property Rights (IPR), “A practical guide on international trademark protection for Malaysian entrepreneurs, The Madrid Protocol- A Route to Global Branding”, Last modified (n.d.), pg. 22, Accessed on March 3, 2023, https://drive.google.com/file/d/1Kw2_HspHbMNRkre6c848E-GBxW7rwkpg/view.
[11] World Intellectual Property Organization (WIPO), “Madrid System: Managing International Trademark Registrations-Renew your Registration”, Last modified (n.d.), Accessed on March 3, 2023, https://www.wipo.int/madrid/en/how_to/manage/renewal.html.
