Many have asked me, “Is there an international trademark?”
And interestingly there is no one right answer in law. Google it, some page says yes and some say no.
For the record, I say, there is no such thing as an international trademark per se BUT an international filing system known as the Madrid Agreement which Malaysia acceded to the said protocol on the 27th September 2019 which came into force on 27th December 2019 and literally the Malaysia parliament introduced a new law i.e. Trademark Act 2019, thus repealing the Trademarks Act 1976.
Whilst the Madrid Agreement provides convenient access to a large number of regions, there is no system that provides you with a truly international protection. Every country will still have their own regional laws to cover areas of protection and infringement or opposition of trademark applications at the local registry.
The Madrid protocol as some will call it will formally examine your application, however each country in which an application is made will still have the opportunity to examine the application under the said country’s system. IN other words, you may still end up dealing with a number of contracting offices in different countries. This is where you have unexpected hidden costs such as the cost of opposition.
Allow me to give you an example, the word “Harajuku”. Harajuku is a district in Japan a place of urban fashion, mix-match clothing. However if one is to apply the said name in let us say Australia or Malaysia, you may passed the test during examination but may fail in Japan thus experience some unlikely hidden cost.
So personally, I would prefer to apply and register in each country appointing various agents/lawyers around the world for easy monitoring. Cost will be depending on each application in that respective country.
Noting the fact also that trademarks are very territorial and must be filed in each country where protection is sought.
For the purposes of calculating cost, you may one to try-out https://madrid.wipo.int/feecalcapp/
I also put up the step by step approached as to how Madrid works. First and foremost, a basic mark MUST be registered in your home country or appointed country. And thereafter a roller coaster.
0 Comments