MALAYSIA Trends and Developments Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
Gan Partnership D-32-02 Menara SUEZCAP 1 KL Gateway 2 Jalan Kerinchi 59200 Kuala Lumpur Malaysia Tel: +6 037 931 7060 Fax: +6 037 931 8063 Email: Office@ganlaw.my Web: www.ganlaw.my
Introduction of the Madrid Protocol in Malaysia On 27 September 2019, Malaysia became a member of the Madrid Protocol, also known as the Madrid Sys- tem, which regulates international trade mark registra- tion and is overseen by the World Intellectual Property Organization (WIPO) (“Accession”). The repeal of the Malaysian Trademarks Act 1976 and the enactment of the Trademarks Act 2019, which aimed to modern- ise Malaysia’s trade mark regime and bring local laws and procedures into compliance with international standards and practices, marked a significant shift in Malaysian trade mark law following the Accession. Through a more effective and globally standard- ised intellectual property framework, the Accession was also part of Malaysia’s broader commercial and economic strategy to support Malaysian companies expanding abroad and attracting foreign investment. The Madrid System reduces administrative complexity and promotes international brand expansion by ena- bling trade mark owners to seek protection in multiple member states with a single international application filed through the applicant’s home office. Malaysia has seen a significant rise in incoming trade mark applica- tions from other countries since the Madrid Protocol entered into force, especially from multinational firms seeking to enter the Malaysian and broader ASEAN markets. From a policy standpoint, Malaysia’s accession repre- sents a broader governmental goal to present Malay- sia as a globally integrated, commercially appealing nation with an intellectual property framework on par
with that of developed economies. This is in line with Malaysia’s goals of: • increasing foreign direct investment; • expanding the digital economy; • transferring technology; and • participating in international trade. Advantages and Disadvantages of Madrid International Registration As Michael Lewis once observed, “There is some- thing bad in everything good and something good in everything bad.” Similarly, applicants must care- fully consider the practical and procedural limitations introduced by the Madrid International Registration system, especially in the context of Malaysian law and regulations, even though it offers significant adminis- trative and commercial advantages. One of the principal advantages of the Madrid System is the availability of a centralised multi-jurisdictional filing mechanism. Applicants may file a single interna- tional application through their home office and des- ignate multiple Madrid member countries simultane- ously. This significantly reduces the need for multiple standalone national filings and lowers administrative and professional costs associated with maintaining separate portfolios across jurisdictions. The sys- tem also enhances portfolio management efficiency through centralised renewal, assignment and recordal procedures administered via WIPO’s Madrid Monitor platform.
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