7 Things ALL Businesses MUST know about Malaysia’s New Trademarks Act

PIX/Spruson & Ferguson

AS the new Trademarks Bill 2019 has been passed in our Parliament, and will soon come into force, here is a quick read for all business owners on 7 things they MUST know:

1. Going global made easy

Local businesses can now protect their trademarks internationally, in a more cost-effective manner. Trademarks are territorial in nature and this means that if trademark protection is sought in 5 countries, individual applications need to be executed in those 5 countries.

For decades, there has always has been a centralised filing system, called the Madrid Protocol (“Protocol relating to the Madrid Agreement concerning the International Registration of Marks”), which makes it cost effective and easier for business owners to protect their marks globally.

The Madrid Protocol is essentially an international registration system which provides for the registration and administration of trademarks in up to 104 contracting parties through a single procedure, with a single administration, in a single language. The International Bureau at WIPO manages the International Applications that are filed through the Madrid Protocol. Malaysia was not a member of the Madrid Protocol and as such, a company based in Malaysia was not able to file an international application, utilising the Madrid Protocol.