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On 27 September 2019, Malaysia deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (“WIPO”). The Madrid Protocol will take effect in Malaysia on 27 December 2019.

The Madrid Protocol is an international treaty administered by WIPO which allows a trademark owner to register the trademark in countries within the Madrid system simultaneously by filing one application with a single office. The Trademarks Bill 2019 which was passed at the Parliament on 23 July 2019 contains notable provisions in anticipation of Malaysia’s accession to the Madrid Protocol.

The Trademarks Bill 2019 allows the Minister to make regulations to enable Malaysia to fulfil its obligations under the Madrid Protocol as well as to obtain all the advantages and benefits provided in the Madrid Protocol. The Intellectual Property Corporation of Malaysia (“MyIPO”) has released the consultation paper on the Trademarks Regulations for public consultation until 4 October 2019.

Here are some highlights on the proposed provisions of Trademarks Regulations 2019 regarding the Madrid Protocol:

For applications originating from Malaysia:
  1. An applicant may apply for international registration of trademarks in accordance with the Madrid Protocol by filing an application with MyIPO, provided that the applicant has a registration of trademark (which will be referred to as “basic registration”), to be used as a basis to file the international application.
  1. Where an international application is filed with MyIPO and upon fulfilment of the application requirements, MyIPO shall verify that Malaysia may be considered as the office of origin for that application and the relevant particulars appearing in the international application correspond to those appearing in the basic application.
  1. MyIPO shall perform the function of an “office of origin” under the Madrid Protocol in relation to the international registration. Where the international application complies with the requirements, MyIPO shall forward the international application to WIPO.
  1. If the international application does not comply with the requirements, MyIPO will not forward the application to MyIPO and shall inform the applicant to make corrections or amendments to the international application.
  1. If the “basic registration” ceases to have effect within 5 years from the date of the international registration, MyIPO shall notify WIPO of it and request the cancellation of the international registration for the goods and services affected.
For international registrations where Malaysia is a designated contracting party:
  1. An international registration designating Malaysia is entitled to become protected if the requirements for trademark registration under the Malaysian laws are satisfied.
  1. An international registration designating Malaysia shall have the same effect as if the application is filed directly with MyIPO, with the date of the designation treated as the date of filing of registration of trademark.
  1. The holder of a protected international registration designating Malaysia has the same rights and remedies conferred on a registered proprietor of a trademark under Trademarks Act 2019.
  1. A claim to priority must be determined in accordance with the Madrid Protocol, i.e. the date on which the holder is entitled to priority is:

ο  the date of the international registration, if the request for protection in Malaysia is mentioned in the international application; or

ο  the date of recordal of the request for protection in Malaysia, if the request is made after the international registration.

  1. Upon examining an international registration designating Malaysia and if MyIPO finds a ground for refusing the registration of the mark, MyIPO will send a provisional refusal to WIPO. WIPO will then transmit this provisional refusal to the applicant and specify the period within which the applicant may respond.
  1. Where Malaysia has been designated in an international registration and the trademark has been accepted, MyIPO shall publish the international registration in the Intellectual Property Official Journal. Any person may file with MyIPO a notice of opposition on the international registration designating Malaysia within 2 months from the publication date.
  1. Where all procedures have been completed by MyIPO, there is no grounds to refuse protection, no notice of opposition received by MyIPO and no provisional refusal issued, MyIPO shall send a statement to WIPO to the effect that protection is granted to the trademark.
  1. International registrations which have been renewed in accordance with the Madrid Protocol and in respect of Malaysia shall continue to have effect in Malaysia.
  1. An international registration designating Malaysia can be transformed into national application. In other words, if an international registration has been cancelled, the owner may within 3 months of the cancellation date, apply to MyIPO to register the mark for the goods and services contained in the international registration.

While the Trademarks Regulations 2019 has yet to be gazetted, it is expected that its provisions will give effect to the Madrid Protocol as per the above.

Key Takeaways

This will be a much welcomed update for brand owners as they can now apply for trademark protection overseas efficiently, by filing one application to apply for trademark protection in different jurisdictions. Administratively, it will also be cost-effective as brand owners do not have to file multiple, national applications in different countries, where each application process and its requirement is likely to differ from country to country.

It is also hoped that the accession to the Madrid Protocol will make Malaysia a more attractive investment destination, especially for foreign brand owners who are concerned about protection of their trademarks.

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This article was written by Donovan Cheah and Ee Lyne Chong. Donovan has been named as a recommended lawyer for labour and employment by the Legal 500 Asia Pacific 2017, 2018 and 2019, and he has also been recognised by Chambers Asia Pacific and Asialaw Profiles for his employment law and industrial relations work.

Donovan & Ho is a law firm in Malaysia. Our practice areas include employment law, dispute resolution, tax advisory and corporate advisory.  Have a question? Please contact us.

 

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