E-briefing: Madrid Protocol Reaches Malaysian Shores on the Eve of a New Decade - 2020

27th December 2019 marks the day when Malaysia officially implements the Madrid System. The Madrid System provides centralised management for the registration of trade marks in multiple countries around the world, commonly known as the International Trademark System.  Local brand owners who are keen to seek trademark protection overseas can now file a single application in Malaysia and designate the countries of interest where their export markets lie - with one set of fees in a single currency. As such, depending on the number of countries of interest, the Madrid system is cost-effective and less cumbersome.

However, brand owners should be wary of a central attack on their trade mark, where any refusal, withdrawal or cancellation of the basic application or basic registration of their trade mark within 5 years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent.

In conjunction with the enforcement of the Trademarks Act 2019, the government foresees an increase in trade mark applications over the next few months. Small and medium enterprises (SMEs) should take this opportunity to harness their intellectual property (IP) rights and develop a long-term brand strategy to protect and leverage their trade mark.

For more information about the Madrid Protocol, please refer to https://www.wipo.int/madrid/en/

Eversheds Harry Elias Intellectual Property & Technology Practice Group

The intellectual property and technology practice group of Eversheds Harry Elias regularly advises clients from a wide range of sectors across the South East Asia region on protecting, commercialising, licensing and enforcing their IP rights. This includes patents, trademarks, designs, copyright, trade secrets and know-how.

For further information contact:

Brian Law

Partner & Regional Head of IP

Eversheds Harry Elias

brianlaw@eversheds-harryelias.com

+65 6361 9303

Esther Wee

IP Counsel, Registered Foreign Lawyer

Eversheds Harry Elias

estherwee@eversheds-harryelias.com

+65 6361 9350