Canada and Brazil recently joined the Madrid System for international trademark registrations, with the number of countries and regions joining continuing to grow. On 27 September, yet another country deposited its instrument of accession; Malaysia. This means that Malaysia can be designated in an international trademark registration (IR) as of 27 December 2019.
The international system for trademark registration (also known as the Madrid System) makes it possible to request trademark protection in one or more member states of the Madrid System by filing one application via WIPO in Geneva, Switzerland.
The Madrid System dates back to the ‘Madrid Agreement’ of 1891 and was expanded by the ‘Madrid Protocol' in 1996. Since the accession of Algeria to the Protocol in October 2015, all international trademark registrations are exclusively governed by the Madrid Protocol, making the Madrid Agreement essentially a non-operational treaty.
Malaysia will be the 106th member state of the Madrid System. After Malaysia’s accession, the Madrid System will cover 122 countries in total, including the EU member states and the three countries of the Benelux. Please note that post-Brexit, the UK will no longer be covered when designating the EU (click here for the latest advice on IRs designating the UK on Brexit).
The ability to designate such a large number of countries and regions in an international trademark registration makes it an increasingly appealing option for businesses - especially now with the recent accession of Canada and Brazil: two large and economically important countries. For an analysis of the pros and cons of the Madrid System, read our article 'International trademarks: Is the Madrid System right for you?'.
When the outlet of your business focuses on several countries or when it is about to enter new markets, it is important to determine whether your interests are sufficiently protected in those countries and regions. For advice on international registrations and further information on IP protection in Malaysia, please contact your Novagraaf consultant.
Frouke Hekker works at Novagraaf’s Competence Centre. She is based in Amsterdam.