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.
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.
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