As a trademark agent with 18 years of experience, one of the most exciting conversations I have with clients is about taking their brand global. Their business is thriving in Malaysia, and they have their sights set on markets like Singapore, China, the US, or Europe. Inevitably, the question arises: "How do I get an 'international trademark'?"
It's a question filled with ambition, but it's based on a fundamental misunderstanding. And today, I want to clarify it for every Malaysian business owner looking to expand.
The single most important thing to understand is this: There is no such thing as a single, worldwide trademark that protects you everywhere.
Trademark rights are, and always have been, territorial.
Think of it this way: your Malaysian company registration allows you to do business in Malaysia. It doesn't grant you the right to operate in Indonesia. Similarly, your trademark registration with the Intellectual Property Corporation of Malaysia (MyIPO) gives you exclusive rights to use that brand within the borders of Malaysia. It offers no protection in Thailand, Australia, or any other country.
To be protected in another country, you must register your trademark in that specific country, according to its national laws.
"So," my clients ask, "does that mean I have to hire lawyers in a dozen different countries and file a dozen different applications in different languages and currencies? That sounds like a nightmare."
Historically, yes. But today, there is a much more efficient solution: The Madrid Protocol.
What is the Madrid Protocol? A Centralised International Trademark Filing System, Not a Global Trademark
The Madrid Protocol is not a magic wand that grants you a global trademark. Instead, it is a highly efficient international filing procedure.
Administered by the World Intellectual Property Organization (WIPO) in Geneva, the Madrid Protocol is an international treaty that allows a trademark owner to seek protection in over 130 member countries by filing a single application through their home trademark office.
It's best to think of it as a central post office for trademarks. Instead of mailing separate application packages to every country yourself, you submit one package (your international application) to your local post office (MyIPO). You provide a list of addresses (the countries you want to be protected in), and the central post office (WIPO) ensures your application is dispatched to each of those national trademark offices.
To further deepen my understanding and expertise in this critical area, I undertook and successfully completed the WIPO course on the Madrid System for the International Registration of Marks, from May 4, 2021, to June 20, 2021. This certification reinforces my commitment to providing the most current and effective guidance on international trademark strategies.
Obtained Certificate in Madrid System in 2021
The process follows a clear path:
The Foundation: A Basic Mark in Malaysia. Before you can go international, you must have either filed an application or secured a registration for the same trademark with MyIPO. This is your "basic mark."
The International Application. You file a single international application through MyIPO, in one language (English), and pay one set of fees in one currency (Swiss Francs). In this application, you designate the specific Madrid Protocol member countries where you want to seek protection.
WIPO Formal Examination. MyIPO sends your application to WIPO. WIPO checks it to ensure it complies with all formal requirements and then records it in the International Register and publishes it. They then forward your application to the national IP offices of all the countries you designated.
The Crucial Step: National Examination. This is where the territorial nature of trademark law comes back into play. Each designated country's IP office will examine your application according to its own domestic laws and procedures.
The United States Patent and Trademark Office (USPTO) will treat it as if it were a US application.
The China National Intellectual Property Administration (CNIPA) will examine it under Chinese law.
The European Union Intellectual Property Office (EUIPO) will examine it under EU law.
Each country has the full authority to grant or refuse protection. Approval in Malaysia does not guarantee approval elsewhere.
Why use the Madrid Protocol?
Efficiency: One application, one language, one currency. It dramatically simplifies the initial filing process.
Cost-Effective: It is generally more affordable upfront than engaging separate lawyers in numerous countries simultaneously.
Centralised Management: Future management is easier. Renewals, or changes in ownership or address, can be recorded through a single, simple procedure with WIPO.
However, my 18 years of experience have taught me to advise clients on the potential pitfalls:
The "Central Attack" Risk: For the first five years, your entire international registration is dependent on your basic Malaysian application/registration. If your Malaysian mark is cancelled or limited for any reason during this period, your entire international registration will also be cancelled or limited.
It's Not a Substitute for Local Counsel: If a designated country (say, Japan) issues a refusal, you will still need to hire a local Japanese trademark attorney to handle the response. The Madrid Protocol gets your foot in the door; it doesn't fight the battles for you.
Not All Countries Are Members: While the list is extensive, some important commercial territories are not members. You will need to file directly in those places.
The Madrid Protocol is a powerful and indispensable tool for international brand expansion. But it is a procedure, not a product.
Your international trademark strategy should not be about simply filing an application. It should be a considered business decision based on your goals for growth, your target markets, and your budget. Sometimes, filing directly in one or two key countries is a better first step. Other times, a broad Madrid application covering 20 countries is the right move.
Navigating this requires a strategic approach. Before you take the leap, let's have a conversation about where your brand is headed. Together, we can build a protection strategy that is robust, cost-effective, and right for your business.
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