ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: International trademarks

New addition to the Madrid System in Southeast Asia: Malaysia


Malaysia is the latest country in Southeast Asia to deposit its instrument of accession to the Madrid Protocol. On 27 September 2019, this historic milestone took place, placing Malaysia among the 122 members of the Madrid System for the international registration of trademarks.

  Madrid Malaysia  

Of the major countries in Southeast Asia, Malaysia and Myanmar (formerly Burma) were the countries that had not yet joined the Madrid System. The following countries already formed part of the System: Singapore, Vietnam, Laos, Philippines, Cambodia, Brunei Darussalam, Thailand and Indonesia. Myanmar is now the only major country in the region that does not permit internationalisation of trademarks via the international trademark registration system, although it is expected to do so in 2020, once its new Trademark Law has been implemented and the administrative bodies are ready for operation. Remaining outside the Madrid System are East Timor and other small dependent territories, whose accession is undoubtedly highly unlikely in the short to medium term.

Like other countries in the Madrid System, in particular neighbouring Singapore, Malaysia has reserved certain rights which enable it to adapt the international regulations to local legislation. For instance, when designating Malaysia through the international registration system, it will be necessary to keep in mind that this country requires an intent to use declaration for the mark and that said declaration will be interpreted as having been made implicitly when filing the designation. As other member countries of the Protocol have done, the term for notification of provisional refusals is extended to 18 months, or beyond for oppositions, which could entail lengthier proceedings, and Malaysia has filed some of the other declarations that may be made by Protocol member countries.

The Madrid Protocol entered into force in Malaysia on 27 December 2019. For the Malaysian authorities it has been a long road to reaching this objective and finally seeing the implementation of its new Trademark Law, which provides for the country’s accession to the Madrid System and which entered into force on the same date.

The new Malaysian Trademark Law opens the door to registration of non-traditional signs that are able to be represented graphically (colour marks, sound marks, holograms, etc.) collective marks, multiclass marks, and also introduces new time limits more in line with other jurisdictions. These are some of the key issues addressed by the new Law, reflecting the extensive efforts made to modernise and adapt to a new era.


Authors:  Cristina Arroyo and Juan Miguel Sáinz de Marles

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Brazil set to become the next country in the Americas to join the Madrid System

Brazil’s accession to the Madrid System for the international registration of trademarks will take effect on 2 October 2019.

With Brazil, the countries in the Americas that form part of the Madrid System will now number 6. Cuba, Colombia, Mexico and the USA are all members, with Canada joining them on 17 June 2019 following its accession to the Protocol. There are also some jurisdictions in the Caribbean that have been members for years, such as Antigua and Barbuda and the Netherlands Antilles (Curaçao, Sint Maarten and the BES Islands, made up of Bonaire, Sint Eustatius and Saba).

With the accession of Brazil, which will become the 121st member of the Madrid System, trademark owners will have the opportunity to opt for an alternative course of protection at WIPO, by means of a single multiclass application, payment of a single fee, the flexibility to seek protection in further countries in the future, and a single procedure for renewal in the designated countries of protection, among other advantages offered by the international trademark system.

It is to be assumed that the official language of the INPI will be Portuguese and, therefore, the language factor will be an issue to consider when defining strategy. While the INPI has worked hard over the years to speed up procedures, there can be no doubt that one of the biggest challenges faced by the Brazilian government is complying with the time limits established by the Madrid System, such as, for example, the time limit for carrying out the examination of the application and the time limits for opposition proceedings.

Authors: Cristina ArroyoJuan M. Sáinz de Marles
Visit our website: http://www.elzaburu.es/

Small steps in the modernization of the Madrid System: Division of international marks

On 1 February 2019 new rules are scheduled to be added to the Common Regulations under the Madrid Agreement concerning the International Registration of Marks and the Protocol Relating to that Agreement. The new rules will be accompanied by new fees.

The Madrid System already provided for the possibility to transform international registrations as a possible strategy for the continued prosecution of the part of a mark not affected by a given obstacle. However, in addition to being a complex procedure, transformation does not produce the same effects or serve the same purpose as the division of a mark, and it is not the same thing in legal terms.

Therefore, these new provisions may be very useful as an alternative procedure in cases where it may be convenient to separate a designated Contracting Party of an international mark.

The new Rule 27bis, item 7.7 of the Common Regulations will establish a provision, when it enters into force on 1 February 2019, for requesting the division of an international registration in respect of a designated Contracting Party.

The procedure for division of an international mark explained in 9 simple steps:

  1. The request for division must be filed with the Office of the designated Contracting Party in respect of which the international registration is to be divided.
  2. To this end, a new form has been established (MM22), which will be the form that must be used for this purpose.
  3. The division request is subject to the payment of 177 Swiss francs to the International Bureau of WIPO. The Offices of the Contracting Parties may in any case reserve the right to charge their own fees for this procedure.
  4. The Office in question may examine the request for division to ensure that it conforms to the locally applicable legislation. If the outcome of said examination is positive, the application will be passed to WIPO.
  5. The Office where the request for division of an international mark is filed may also include, together with the request, a statement of interim status of the mark (Rule 18bis) or a statement of grant of protection (Rule 18ter).
  6. WIPO will examine the request for division on the basis of the requirements of Rule 27bis and notify any irregularity to the Office which presented the request while also notifying the owner of the mark.
  7. The request for division will be deemed abandoned if the Office in question does not remedy the irregularity within a term of three months from the date of its notification.
  8. WIPO will record the division of the international registration in respect of a designated Contracting Party when the request for division meets the requirements of Rule 27bis. The date of recordal of the division will be the date on which WIPO received the request or, in the event of an irregularity, the date on which it was remedied.
  9. WIPO will create a divisional international registration for the goods and services specified in the request, with the Contracting Party concerned as the sole designated Contracting Party.
Author: Cristina Arroyo

Visit our website: http://www.elzaburu.es/en



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