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Previously, registering a Malaysian TM required applying to the Malasian IPO Office. Once the Madrid System (MS) is implemented, Malaysian entrepreneurs will get to submit their TM applications to the WIPO & avoid having to go through a lengthy & cumbersome registration procedure.

Applying for TM registration under the MS requires brand owners to indicate a specific jurisdiction. Applications filed under the MS are examined by TM offices in those jurisdictions, following which a decision is made as to whether or not obtaining ownership of a Malaysian TM in them is possible.

Advantages

  • Simplified procedure. Registering a Malaysian brand requires paying fees in a single currency & filing only one application. No fees associated with translating, notarizing & legalizing applications must be paid; PoA isn’t required either.
  • Centralized management. Irrespective of the number of jurisdictions, only one renewal date & registration number are necessary.
  • Inexpensiveness. Expenses related to filing applications in different jurisdictions are substituted with general fees/costs (e.g. registering SMEs in Malaysia enables their owners to use the few resources they have to fund other projects).
  • Strict deadlines. IP offices located in selected jurisdictions must review applications & respond to them within strictly specified deadlines.

Disadvantages

  • Centralized attacks. TM owners expose themselves to risks of “centralized attacks” within a period of five years since the registration date (though such attacks happen very rarely). To successfully counter them, they can convert their Madrid-issued registrations into the ones issued in their respective countries.
  • Multiple TMs can’t be registered.  It’s permitted to register only one TM in jurisdictions of one’s choice.
  • Few countries recognize the MU. This means that TM owners will have to enlist services of local lawyers to obtain protection of TM rights in the countries that signed the MA.

Things to Keep in Mind

Registering a TM under the MS requires carrying out an analysis of costs & benefits. When it comes to multiple jurisdictions, filing separate applications in one’s respective country may be a wise choice. 

Conducting a TM search might be necessary to determine if similar TMs were previously registered in a selected jurisdiction. If they were, filing applications in one’s own country with dissimilar TM representations can make more sense.

Registering an international TM in Malaysia may require coming up with a strategy suitable for a specific TM & weighing out all pros & cons of using the MS.

Conclusion

To sum up, protecting TMs internationally is easier if you use the MS. Prior to opting for the MS, TM owners should weigh out all the pros & cons of obtaining protection for a given TM in a particular jurisdiction. 

Need advice on the protection of TM rights in overseas jurisdictions?  Looking for assistance with registering a TM in Malaysia and countries of the Madrid Union? Why not reach out to IQ Decision UK? Our experts will be happy to give you a hand with any challenges you’re facing in that regard.