Expanding a brand beyond domestic borders has become a crucial step for businesses seeking growth and sustainability in today’s interconnected world. Introducing a brand to the global market presents numerous opportunities, but it also comes with its fair share of challenges. One of them is to ensure that effective measures have been taken in order to ensure that the brand is being protected in each of the countries where the business is being conducted. In this article, we will explore the topic of international trademark registration to help Malaysian companies and entrepreneurs understand how to safeguard their brands in global market.
The Essence of Trademark Registration
Trademark registration is vital for brand protection. When successfully registered, the owner gains exclusive rights conferred by the local law such as the right to exploit the registered trademark and the right to prevent any other third party from using identical or similar mark to the registered trademark. In Malaysia, trademarks can be registered through the Intellectual Property Corporation of Malaysia (“MyIPO”) for a period of ten (10) years, renewable indefinitely.
Expanding your business globally requires protecting your brand in each target country. Trademark rights are territorial and valid only within specific countries or regions. Generally, separate trademark applications must be filed in each country for brand protection. However, Malaysia offers an alternative route through the Madrid System, a centralized filing system of trademark applications and streamlined management of registrations.
The Madrid System is a highly convenient and cost-effective system administered by the World Intellectual Property Organization (“WIPO”) offering one-stop solution for any eligible person to file an international application in one single application form, by designating the countr(ies) or region(s) that have already become the contracting parties to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”). The current list of the contracting parties to the Madrid Protocol can be accessed via https://www.wipo.int/madrid/en/members/.
The Madrid System, as a centralized system may also be utilized to manage international registration such as to track the current status of an international trademark application, to perform renewal and to apply for subsequent designation in case there is a need to expand the territory where the trademark protection is to be sought. The international trademark application process has become easier since the application can be made in one language i.e. English language which eliminate the need for translation services and the applicant is only required to pay one set of fees in one currency i.e. in Swiss francs.
Examples of Malaysian Brands Benefiting from the Madrid System:
1. ‘Julie’s’ mark by Julie’s Manufacturing Sdn. Bhd.
‘Julie’s’ is a renowned name in the Malaysian biscuit industry. The brand, known for its delectable range of biscuits, pastry, confectionery and other cereals-based products, take their local success to an international scale. The company has designated several countries under the Madrid Protocol, from Middle Eastern nations like Bahrain and Egypt to countries with emerging economies like Mexico and Colombia. The company also protect its brand in markets like Azerbaijan, Ghana, Iran, Democratic People’s Republic of Korea, Kazakhstan, Mongolia and Tunisia.
2. ‘NEUTROVIS’ mark by Maystar Beauty Sdn Bhd
One brand that comes to mind when it comes to face masks is Neutrovis. Maystar Beauty Sdn Bhd, understanding the importance of brand identity, has protected its ‘NEUTROVIS’ mark as the company penetrate the Southeast Asian market. By designating countries like Brunei Darussalam, China, Indonesia, Cambodia, Lao People’s Democratic Republic, Philippines, Singapore, Thailand and Viet Nam under the Madrid Protocol, the company’s brand is safeguarded against potential infringements.
Checklist: Filing an international application using the Madrid System
An international application for registration of a trademark via the Madrid System shall be made through the MyIPO as the office of origin (‟International Application”). The following checklist are some of the matters that requires the applicant’s attention for the filing of the International Application:
The fees for filing the International Application
The breakdown of the fees for filing one (1) International Application (either in a single class or multiple classes) can be seen as follows:
Summary of the Process of International Application
There are three (3) basic steps in the process of filing the International Application (in case of a smooth application):
By utilizing the Madrid Protocol, Malaysian companies and entrepreneurs can protect their brands internationally, expand into new markets and effectively manage their trademark registrations. However, it is essential to choose the Basic Mark that is distinctive, conduct thorough searches and make careful preparation prior to and during filing the International Application. Further to the above, be active in managing your international registrations to ensure long-term brand protection and business success.
Corporate Communications, Azmi & Associates – 26 September 2023