The Gordian Team
Madrid Protocol – Your Gateway to Global Brand Protection
Updated: Nov 10, 2022
On 27 December 2019, the Madrid Protocol came into force in Malaysia. And with it, protecting your brand globally is just a single application away. Through the System, with a single application you can protect your trademark in up to 122 countries.
Prior to Malaysia's entry into the Madrid Union, the only way for local businesses to protect their trademarks overseas would be to file an application in each of their target country through a local IP practitioner--a tedious and oftentimes costly affair. Whereas with a Madrid application, once you've filed your application at the IP Office in Malaysia, it will be sent to the World Intellectual Property Organisation (WIPO) who will then send your application to the local IP offices of all the countries you've selected, cutting out the middle man (so to speak).
So, aside from saving you cost and time, what other goodies does the Madrid Protocol bring? In some jurisdictions, a Madrid application may move along faster than a national application as the member state must complete examinations within 18 months. Changes in ownership, address, etc. can be recorded more easily as you'll only need to record the changes with WIPO who will then transmit the changes to the local IP offices.
However, there are some downsides to Madrid too. Firstly, although the Madrid system covers most major markets, there are a few who are left out (e.g. Hong Kong, Qatar, Saudi Arabia, South Africa, UAE, Taiwan etc.). Secondly, although it opens up the world to Malaysian businesses, it also opens up Malaysia to the world. For a foreign company with hegemonic intentions, or worse, a trademark squatter (an extortionist who registers trademarks just to sell them back to the owners), your precious trademark is now just a tick box away. Also, Madrid applications have a dependency period of 5 years, where the international registration will collapse if the home application/registration is cancelled or abandoned (in what's known as a Central Attack).
To find out more about how you can utilise the Madrid Protocol as part of your international trademark protection strategy or whether Madrid is right for you, please give us a holler.