Registration of a trademark is territorial based. In order to protect your trademark globally, it is necessary to secure its registration country by country. Currently, there is no unitary registration system which could protect your trademark globally by filing a single application.
Let’s say you have applied or registered a trademark in Malaysia or your home country, and now you have decided to use the Madrid System to protect your trademark in China, US and Japan. What is the next step?
Generally, there are 3 routes to protect a trademark globally:-
The Direct Filing Route – File your trademark application directly with the Intellectual Property (IP) Office of each country by appointing the local trademark attorney (like appointing IP Gennesis for trademark registration in Malaysia), this is the conventional way.
The Madrid System Route – You may leverage on the Madrid System to extend the protection of your trademark within the member states of Madrid Union. Click here for the list of countries in the Madrid System. Note that Madrid System is primarily an international system to facilitate the registration of trademarks within its member states, it does not grant any trademark protection in any country. We will explain further in this article below.
The Regional Route - Applying for protection through a regional trademark registration system with legal effect in all Member States. For example:- a. African Regional Intellectual Property Organization (ARIPO); b. Benelux Office for IP (BOIP); c. European Union Intellectual Property Office (EUIPO); and d. African Intellectual Property Organization (OAPI).
What is the Madrid System?
The Madrid System is a convenient and cost-effective system to facilitate the registration and management of trademarks within the member states of the Madrid Union globally. It is administered by the World Intellectual Property Organisation (“WIPO”) in Geneva, Switzerland. With a single application in one language and paying one set of fees, you may extend the protection of your trademark in multiple jurisdictions.
There are 3 key stages for an international application of a trademark using the Madrid System.
First Stage: Filing International Application via Office of Origin
In Malaysia, the initial stage of the International Application by Madrid System (“International Application”) is handled by our national IP Office, i.e. Intellectual Property Corporation of Malaysia (“MyIPO”).
In order to be eligible to use the Madrid System in Malaysia, an applicant must fulfil the following requirements:-
Entitlement to File an International Application The applicant must be a citizen of Malaysia; a body or corporation incorporated or constituted under Malaysian law; a person domiciled in Malaysia; or a person who has a real and effective industrial or commercial establishment in Malaysia.
Basic Mark or Basic Application Under the Madrid Protocol, the international application is based on a national application or registration. This means that the applicant must have filed an application (“basic application”) or already registered a trademark (“basic registration”) in Malaysia. The basic application / registration and the international mark must have the same owner, identical mark and the same (or narrower) list of goods or services. (Section 61 of the Malaysian Trademarks Regulations 2019)
Once you have satisfied the above requirements, you may prepare and submit Form MM2, with the following information to MyIPO, together with the prescribed fees:-
Applicant’s name, address and contact details - The email address is mandatory for the application as all communications will be sent to the email address given.
Appointment of representative – If you have appointed a Trademark Agent or Attorney to represent you in the International application, Form TMR7 is to be submitted.
Reproduction of the mark - This must be an identical mark as the basic application or registration. The size of the representation of the mark shall be within 8cm x 8cm, which is the standard size for publication of a mark in the WIPO Gazette.
Lists of goods and services – The list must be the same or narrower than the one in the basic application or registration .
Designate Contracting Parties – You may identify which countries you wish to extend the protection of your trademark.
Date of Priority Claimed (if any) - You may claim the date of priority within 6 months from the basic application, then the basic application date will be used as a reference of priority rights in the International applications in the subsequent countries.
The form must be printed on one-sided, size A4 sheets and completed legibly, with the use of a typewriter or other machines. Handwritten forms are not acceptable by WIPO.
Once the forms are completed, they may be submitted together with the payment of the following prescribed fees:-
MyIPO Handling Fees - Form TMMP1; and
WIPO Fees - basic fees and fees for intended countries; or basic fees and individual fees:-
Basic Fees = 653 CHF for a black and white mark, 903 CHF for a coloured mark.
Fees for designated countries - complementary and supplementary fees.
Individual Fees charged or declared by Designated Countries - This will replace both the complementary and supplementary fees for the designated countries.
While the MyIPO Handling Fees could be paid directly to MyIPO at the time of filing, the WIPO fees could be paid by international fund transfer to WIPO’s bank account or through direct debit from the applicant’s WIPO current account.
Upon receipt, MyIPO will review and certify that the information in the international application corresponds to that of the basic application or registration, for example, particulars of the application and the classification of goods or services. The certification process usually takes up to 2 months (maybe slightly longer, depending on the workload of MyIPO). Once the information is certified, MyIPO will forward the International Application to WIPO.
(Article 3(1) of the Madrid Protocol)
Second Stage: Formal Examination by WIPO
WIPO will conduct a formality examination, particularly on the Nice classification and the clarity of the list of goods or services.
If WIPO is satisfied that the international application conforms to the requirement, the mark will be registered and recorded in the International Register. Next, WIPO will publish it on WIPO’s Gazette of International Mark, in which you may monitor the international application by real-time search using Madrid Monitor.
After the publication, WIPO will send you, i.e. the Trademark Holder, a certificate of the trademark international registration and notify the Offices of the designated countries.
Please note that different from the usual certificate issued by the local IP Offices, the trademark certificate issued by WIPO is not a grant of trademark protection. It merely certifies that the trademark has been recorded in the International Register.
At this stage, each designated country still maintains its discretion as to whether to grant a trademark protection.
Third Stage: Substantive Examination by local IP Offices of Designated Contracting Countries
The designated country will conduct a substantive examination to determine the protection of the international registration according to its domestic legislation respectively, in the same way as a direct filing to that Office, within the given time limit of 12 months or 18 months. In other words, each country will have its own discretion as to whether to grant the trademark protection. The refusal of the IP Office of one country does not affect the scope of protection of another country.
There are 3 possible outcomes on the International Trademark Application under the Madrid System, from the IP Offices of the designated countries:-
Statement of grant of protection - Where there are no grounds of refusal and the IP Office agrees to grant protection on the trademark, it will send the statement to WIPO.
Provisional refusal - IP Office of designated country refuses the protection of international registration in its territory. The Office will send an official refusal notice to WIPO, who will subsequently forward the said notice to you.
No decision (Principle of “tacit acceptance”) - If no decision has been communicated to WIPO within the time limit, the mark is deemed to be protected in the designated countries.
WIPO will record any of the abovementioned decisions in the International Register and notify the holder or their representative of the decisions made by the Office of designated countries.
Protection and Renewal
Upon the grant of trademark registration by the local IP Office, your trademark will have the protection of 10 years from the date of the international registration. It may be maintained through renewal every 10 years, by paying prescribed fees.
What are the pros and cons of the Madrid System?
The Madrid System has its advantages and disadvantages.
Advantages:
a. Simplified procedure, cost-effective and faster process
The applicant only needs to file one international application in one language and pay one set of fees in one currency (Swiss Francs) to the International Bureau. This lowers the costs of the international registration. It is also a centralised management of the trademark portfolios because the Madrid System only has one registration number and renewal date despite multiple designated countries.
Besides that, the IP Offices of designated countries only need to focus on substantive examination according to their domestic laws within a time limit. The Applicants are likely to receive a decision on his trademark application within 2 years.
Disadvantages:
a. 5-Year Dependency Period (“Central Attack”)
For 5 years from the date of the international registration, the international registration is dependent on the basic mark. If the basic mark ceases to have effect, the international registration will also be cancelled. It is known as a “central attack” as the international registration of all concerned designated countries is defeated by a single invalidation against the basic mark.
However, to soften the consequences, the applicant may have the option of transforming the international registration into national applications.
b. Series Mark Application not available
Series mark application is not available under the Madrid System, as the international registration needs to be based on a basic application. If so, we will have to pick 1 version of the mark (black and white recommended) for the filing of an international application.
c. Not All Countries are within the Madrid Union
Trademark owners need to appoint the respective foreign attorneys to facilitate the applications in those countries.
What are the Differences Between the Madrid System and Direct Filing
The table below highlights the differences between the Madrid system and Direct Filing:-
International Route (Madrid System) | National Route (Direct Filing) |
The basic application or registration in Malaysia (or country of origin) is required as a basis before filing the international application in other designated countries. | The basic application or registration in Malaysia (or country of origin) is not required. |
The appointment of a foreign attorney is not required and filing will be done through MyIPO (or IP Office of country of origin) for smooth applications only. However, if there are provisional refusals or office actions from the designated countries’ IP Office, the applicant still needs to appoint a local attorney to file the appeal or response against the refusals. | The appointment of a foreign attorney is required to file the trademark application. |
Due to the 5-year dependency period, if the Malaysian (or other country of origin) trademark is refused, revoked or cancelled, the international trademark applications may be invalidated too. Although you may transform it into a local application, this would incur extra costs. | The Malaysian (or country of origin) trademark registration does not affect the direct filing of foreign registrations. |
Therefore, the most appropriate option on which route to pick for filing an application abroad actually depends on the trademark owner’s business strategy.
What can we do under the Madrid System other than filing an application?
Besides filing an application under the Madrid System, it is a centralised management of your trademark portfolio. A proprietor may use the system to:-
Renew International Trademark Registration
Other than filing an international application using the Madrid System, applicants may maintain and renew the registration at the end of every 10 years directly with WIPO.
You may renew the trademark before the expiry date by filing the Form MM11 with the prescribed fees. It is also possible to renew within 6-months grace period from the expiry date, subject to a surcharge.
(Article 7 of the Madrid Protocol & Rule 30 of the Madrid Regulations)
Change Ownership of An International Registration
Using the Madrid System, a request for a change in ownership of an international registration could be done. The request may be presented to the International Bureau directly by the holder or the recorded representative; or through the Office of the designated Contracting Party of the recorded holder (transferor) or the transferee.
Upon submission of Form MM5, together with the prescribed fees, the International Bureau shall record the change in ownership in the International Register.
(Article 9 of the Madrid Protocol & Rules 25 and 27 of the Madrid Regulations)
Subsequent Designation
The holder may add further designated countries to their existing international registration without having to file a new international application in certain situations. E.g., where protection in that designated countries was not requested at the time of international registration. The official form for submitting a subsequent designation is Form MM4. However, there are a few countries that declared that a subsequent designation is not allowed, so a new international application shall be filed in this event.
(Article 14(5) of the Madrid Protocol)
Engage a Trademark Agent
International trademark registration is a highly technical and lengthy process. it is strongly recommended to engage a competent trademark agent to assist you in all the above processes. Feel free to call us today to protect your trademark in Malaysia and overseas!
Written by
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP, Advocate & Solicitor (Non-Practising)
IP Legal Intern
LL.B (HONS), CLP
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from professionals.
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