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Accession of Madrid Protocol by Malaysia

July 19, 2019

The much-awaited Trade Mark Bill, 2019 and the Trade Descriptions (Amendment) Bill 2019 in Malaysia have been passed by Dewan Rakyat i.e. Parliament of Malaysia on July 02, 2019. today passed. The first reading of the Trademarks Bill 2019 was presented at the Parliament on April 09, 2019 and the same was passed in the lower house on July 02, 2019.

With this Bill, Malaysia has acceded to Madrid Protocol, which will now allow a trademark owner to file an international trademark application through the Intellectual Property Corporation of Malaysia (hereinafter referred to as “MyIPO”).

The move was long overdue since 2013 as Malaysia was previously one of the two members of ASEAN Countries that were yet to accede to the Madrid protocol. The Madrid Protocol currently has 104 countries acceding to it, with Canada as the latest addition to the list.

The Madrid Protocol along with the Madrid Agreement, gives the legal basis to the Madrid System which is the primary method of international registration of trademarks in multiple Jurisdictions. Administered by the World Intellectual Property Organization, the Madrid Protocol allows the trademark owners of its contracting parties to seek protection of their trademarks in multiple countries by filing a single application. It is a cost-effective method as it saves time and money by filing one application, rather than a bundle of national applications. Moreover, the Madrid Protocol also allows such applications to be filed in a single language and grants protection to the trademarks in multiple countries upon the payment of a single fee.

KEY HIGHLIGHTS OF THE BILL

Few of the key highlights of the bill are as follows:

  • Accession to the Madrid Protocol
  • Recognition of non-traditional marks such as “color, sound, smell, 3D or animation”
  • Protection of Collective Marks
  • Applications in multiple classes
  • Division and Merger of trademark applications and registrations
  • Registration conclusive after 5 years instead of 7 under the current Act
  • Revocation of registration by Registrar
  • Groundless threats of infringement proceedings

Domestic Trade and Consumer Affairs deputy minister Chong Chieng Jen said when presenting the bill for the second reading that expansion of the trademark protection scope to nontraditional marks was a necessity for the domestic and foreign trade sectors.

The date from which the Protocol will enter into force for Malaysia, the local business owners in Malaysia could seek protection of their trademark in territories of the other 104 member countries through a single application filed with MyIPO and payment of a single set of official fees. This will help them in significantly reducing the costs and efforts during their expansion in other countries.

Benefit for Indian Business

 In addition, the foreign applicants (including Indian Applicants) could also obtain trademark protection for their marks by designating Malaysia in their Madrid Application along with other member countries as the same would be cost effective way of getting the Trademark registered in Malaysia rather than filing separate trademark application with Malaysian IP Office.

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