MALAYSIA is in the process of acceding to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), adopted in Madrid on June 27, 1989, to take advantage of the 21st century mega trademark development impacting global business and online entrepreneurship.
The Madrid Protocol is an international treaty administered by the International Bureau of World Intellectual Property Organisation (Wipo).
Its key advantage is summed up by Asean IP (Intellectual Property) as: “The Madrid Protocol, administered by the International Bureau of Wipo in Switzerland, allows a trademark owner to seek protection of the trademark in several countries simultaneously by filing one application with a single office, in one language and by paying one fee.”
The move is long overdue. Malaysia is one of two members of Asean yet to accede to the Madrid Protocol. This strategic move is a follow-up to Malaysia’s commitment to the Asean Intellectual Property Rights Action Plan 2011-2015 that requires member states to progressively accede to the Madrid Protocol pertaining to the Madrid Agreement.
According to Wipo, Asean countries that have acceded to the protocol are Brunei, Cambodia, Indonesia, Laos, the Philippines, Singapore, Thailand and Vietnam.
The proposed Trademark Bill 2019 supports Malaysia’s obligation under the Madrid Protocol. It is anticipated that amendments will be made to the Trademark Act 1976 (TMA) to incorporate the changes.
A total revamp of TMA or the introduction of a new act will put Malaysia on a new frontier of trademark development, on international and national fronts.
It is hoped that the amendments would provide the below:
PRACTICAL monetisation of trademark as an intellectual property asset for business;
PROTECTION of non-traditional trademark, such as “sound, smell, colours and hologram” (Section 3(2)(a) of TMA needs a revision to permit non-traditional trademark);
PROTECTION of Collective Marks, (although Section 56 of TMA allows for certification marks, collective marks are not provided for);
A PROCEDURE for single filing of trademark for International Trademark Registration Process after registration of the basic mark for global protection in various jurisdictions;
THE formal examination of trademark application by Wipo with lower fees to be expedited;
SUBSTANTIVE examination by national/regional IP Offices (Office of the designated Contracting Party) with lower fees;
THE 12- or 18-month period under Stage 3 of International Trademark Registration Process to be revised to nine months or shorter to avoid delay;
INTELLECTUAL PROPERTY ownership rights, single enforcement procedures and regulations to be made simpler and easier for implementation by stakeholders; and,
OPPOSITION proceedings to be done through mediation to ensure speedy and cost-effective process.
Apart from Wipo Singapore and the Asian International Centre, the Malaysian Mediation Centre and Universiti Kebangsaan Malaysia offer mediation services.
Trademark issues under
the Trans-Pacific Partnership (TPP) remain crucial because Malaysia’s trademark law
must be seen to reflect the objectives of the Asean Economic Community (AEC) interest in view of the Asean Intellectual Property Rights Action Plan 2011-2015.
In this regard, the interest of Malaysia and AEC as a whole will be paramount by considering certain attractive trademark components of TPP’s IP framework.
A modern and lean trademark law will transform Malaysia into a competitive leader in trademark economy of the 21st century, ranging from halal business to e-commerce.
JEONG CHUN PHUOC
Shah Alam, Selangor
Zinatul Ashiqin Zainol, Bangi, Selangor