1. Introduction
In the contemporary global economy, a brand has become one of the most significant and valuable commercial assets of a business. Central to this is the role of a trademark, which functions not only as a sign that distinguishes the goods or services of one enterprise from those of another, but also as a symbol of reputation, quality, and consumer trust.[1] As businesses increasingly expand beyond domestic markets through international trade and digital commerce, protecting trademarks across multiple jurisdictions has become an important commercial consideration.
Despite the global nature of modern commerce, trademark protection remains fundamentally territorial.[2] Trademark rights are territorial in nature and are only enforceable within the relevant jurisdiction. Businesses intending to operate internationally must therefore consider how to secure protection in foreign markets.
In Malaysia, trademark protection is governed by the Trademarks Act 2019 and administered by the Intellectual Property Corporation of Malaysia (MyIPO). To obtain protection overseas, businesses may either file separate applications in each jurisdiction or utilise the international filing system administered by the World Intellectual Property Organization (“WIPO”) under the Madrid Protocol, which enables applicants to seek protection in multiple jurisdictions through a single international application.[3]
Before examining the Madrid Protocol system in greater detail, it is useful to first understand how trademark protection is obtained at the national level in Malaysia.
2. Malaysian National Trademark Filing
Trademark protection in Malaysia is obtained by filing an application with the Intellectual Property Corporation of Malaysia in accordance with the requirements set out in the Trademarks Act 2019., A registered trademark confers upon the proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered within Malaysia.[4] Registration also provides the legal basis for enforcement against unauthorized use of identical or confusingly similar marks.
The trademark registration process with MyIPO generally involves several stages as follows:[5]
- the applicant may conduct a preliminary search and advice to ensure the registrability of the mark prior to the application for registration by filing the Form TMA-1. This is an optional preliminary stage for applicant;
- should the preliminary search and advice revert with a positive response, the application for registration of the trademark may be done by filing Form TMA-2;
- upon filing, the application undergoes formality validation, where the Registrar verified whether the application complies with the required procedural and documentation requirements;
- the application will then proceed to substantive examination, during which the Registrar assesses whether the mark satisfies the requirements under the Trade Marks Act 2019, including whether it conflicts with any earlier registered or pending trademark applications;
- if the Registrar is satisfied that the mark meets the statutory requirements, the application will be accepted and subsequently published in the Government Gazette for opposition. During this period, third parties may oppose the registration; and
- if no opposition is filed, or if the opposition is unsuccessful, the trademark will proceed to registration. Once registered, the trademark is valid for ten years from the filing date and may be renewed indefinitely for successive ten-year periods.
The illustration of the application process can be referred below: –
National trademark filing is often sufficient for businesses that operate mainly in their domestic market or whose trademarks are still in the early stages of development. It can also be more practical when protection is needed in only a small number of foreign countries, as direct filings may be simpler and more cost-effective. However, as a business expands internationally and requires protection in multiple jurisdictions, it may consider obtaining trademark protection through the international registration system under the Madrid Protocol.
3. The Madrid System
The Madrid System, managed by WIPO, allows trademark proprietors to seek protection in multiple countries through a single application and one set of fees. As of March 2026, it covers 116 members covering 132 countries.[6] Using MyIPO as the Office of Origin, applicants may renew or expand their international trademark portfolio through this centralised system.
3.1. Nature of the Madrid System
Through the Madrid System, WIPO facilitates the registration of trademarks across multiple jurisdictions through a centralised filing procedure.[7] A trademark proprietor may file a single international application designating any of the member countries where protection is sought.[8] Each designated jurisdiction then examines the application according to its own domestic trademark laws. Importantly, the Madrid System does not result in a unitary global trademark. Rather, it creates a bundle of national trademark rights that take effect in each designated country where protection is granted.
3.2. Eligibility to Use the Madrid System
To utilize the Madrid System, an applicant must have a sufficient connection with a member country.14F[9] This connection may arise through nationality, domicile, or the existence of a real and effective industrial or commercial establishment within that jurisdiction.[10] In Malaysia, applications must be filed through the MyIPO that acts as the Office of Origin.[11]
4. Eligibility Requirements (Madrid System)
4.1. The Basic Mark Requirement
A key requirement of the Madrid System is the existence of a basic mark, which refers to a trademark application or registration in the applicant’s home jurisdiction.[12] For application designating Malaysia as its Office of Origin, the application must be based on a Malaysian trademark application or registration filed with MyIPO. The application must correspond with the Malaysian basic mark in terms of proprietorship; representation of the mark and the list of goods or services attached to such mark.[13]
4.2. Scope of Goods and Services
The scope of goods and services claimed in the international application cannot exceed those specified in the Malaysian basic mark.[14] Accordingly, careful drafting of the specification of goods and services at the Malaysian filing stage is critical. An overly narrow specification in the basic application may restrict the scope of protection that can later be sought internationally.
5. How the WIPO’s Madrid System Operates
5.1. Procedures for Filing International Trademark Applications via Madrid System in Malaysia
Filing an application through the Madrid System involves three main stages:[15]
- Submission
Any application for an international registration of a trademark must be filed through MyIPO using the prescribed forms, namely Form MM2 (Application For International Registration Under The Madrid Protocol) and Form MP1 (Handling Fee). The application must be based on a Malaysian basic mark and be accompanied by the prescribed fees. At this stage, the applicant is required to pay a handling fee to MyIPO, which is currently RM200 per application together with the prescribed payment to WIPO as required in the Form MM2.
The fees payable to WIPO consist of a basic fee together with additional fees depending on the designated jurisdictions and the number of classes of goods and/or services. These may include a complementary fee for each designated country and a supplementary fee for each class beyond three classes, unless the designated country requires an individual fee, which replaces both fees. All international fees must be paid directly to WIPO in Swiss Francs (CHF).
Upon receipt of the international application, MyIPO will verify that the particulars of the international application correspond with those of the basic mark, including the proprietorship of the mark, the representation of the mark, and the list of goods and/or services. Once satisfied that the application is in order, MyIPO will certify the application and transmit it to the International Bureau of the World Intellectual Property Organization for further processing.
- Formal Examination by the WIPO
Upon receipt of the application, WIPO will conduct a formality examination to ensure that the application complies with the prescribed requirements. This includes verifying that the applicant’s contact details are complete, that at least one member country has been designated for protection, that the representation of the mark is acceptable, and that the relevant international fees have been paid.
Once the application complies with all formal requirements, WIPO will register the mark in the International Register, publish it in the WIPO Gazette of International Marks, issue a Certificate of International Registration, and notify the intellectual property offices of the designated member countries.
- Substantive Examination by Designated IP Offices
Following notification by WIPO, the intellectual property offices of the designated member countries will examine the trademark application in accordance with their respective domestic trademark laws. Each designated office is generally required to communicate its decision within twelve months from the date of notification, or within eighteen months in certain circumstances.
WIPO will record the outcome in the International Register and notify the applicant accordingly. Importantly, the assessment carried out by each designated office is independent; therefore, a refusal of protection in one jurisdiction does not affect the protection granted in other designated member countries.
The illustration of the registration process can be referred below: –
5.2. Possible Outcomes of substantive examination by IP Offices:[16]
Upon completion of substantive examination by the designated intellectual property offices, a trademark application may give rise to one of several outcomes as follows: –
- where no response is issued within the prescribed time limit, protection shall be deemed granted automatically, reflecting tacit approval under the relevant domestic legislation; or
- where the office determines that there are no grounds for refusal, a formal statement of grant of protection will be issued. It should be noted that certain jurisdictions, including Brazil and Cuba, may require the applicant to remit a second portion of the individual fee at this stage for protection to take effect; or
- the office may issue a provisional refusal where it identifies grounds for refusal, whether in whole or in part. Such a refusal will ordinarily set out the specific reasons for the decision, the procedural steps necessary to respond within the prescribed timeframe, available avenues for review or appeal, and whether engagement of a local agent is required.
Applicants are entitled to challenge a provisional refusal through the respective domestic appeal procedures. Following such an appeal, protection may be granted either in full or in part, or the refusal may be confirmed in its entirety. In certain jurisdictions, further appeals to higher administrative or judicial authorities are permitted, in accordance with local laws.
6. Legal Risks and Structural Limitations
6.1 The Five-Year Dependency Rule
For the first five years following international registration, the international registration remains dependent on the underlying Malaysian basic mark. If the Malaysian mark is cancelled, refused or limited during this period, the international registration may be cancelled to the same extent. This is commonly referred to as a “central attack”.[17]
6.2 Territorial Enforcement
Another important limitation is that trademark rights obtained through the Madrid System remain territorial.[18] Each designated country retains the authority to refuse protection based on its own domestic law. Consequently, protection may be granted in some jurisdictions but refused in others.
7. Madrid System vs Malaysian National Filing
Although both mechanisms relate to trademark protection, they serve different strategic functions.
A Malaysian national filing provides protection within Malaysia and operates independently of foreign trademark systems. It forms the foundation of trademark rights for Malaysian businesses.
The Madrid Protocol system, by contrast, operates primarily as a procedural tool for extending trademark protection to multiple jurisdictions through a centralised filing system. In practice, the two systems are complementary rather than mutually exclusive. Malaysian trademark registration frequently serves as the starting point for businesses that subsequently seek international protection through the Madrid Protocol.
8. Conclusion
As Malaysian businesses increasingly expand into regional and international markets, securing trademark protection beyond domestic borders has become an important aspect of brand management.
The Madrid System provides a streamlined mechanism for seeking trademark protection across multiple jurisdictions through a single international application administered by the WIPO. However, the system does not create a universal trademark and remains dependent on national trademark laws in each designated jurisdiction.
For Malaysian businesses, a strong domestic trademark registration with the Intellectual Property Corporation of Malaysia remains the cornerstone of any international trademark strategy. Businesses considering international expansion should therefore evaluate their commercial objectives, target markets and long-term branding strategy when deciding whether to pursue trademark protection through national filings, the Madrid System, or a combination of both.
[1] World Intellectual Property Organization, Why Trademarks Matter to SMEs, https://www.wipo.int/en/web/business/trademarks (accessed 6 March 2026)
[2] World Intellectual Property Organization, Protection of Trademarks, https://www.wipo.int/en/web/trademarks/protection (accessed March 2026)
[3] Intellectual Property Corporation of Malaysia (MyIPO), Applying for a Trademark, https://www.myipo.gov.my/applying-for-a-trademark/ (accessed 6 March 2026)
[4] Malaysian Intellectual Property Association (MIPA), Trademark, https://mipa.org.my/intellectual-propert/trademark/ (accessed 7 March 2026)
[5] Intellectual Property Corporation of Malaysia (MyIPO), Applying for a Trademark, https://www.myipo.gov.my/applying-for- a-trademark/ (accessed 6 March 2026)
[6] Intellectual Property Corporation of Malaysia (MyIPO), Applying for a Trademark, https://www.myipo.gov.my/applying-for- a-trademark/
[7] Noor Asyikeen bt Mohd Salleh, Malaysian’s Perspective towards Madrid Protocol Accession (2016) (CPD Online Publication, Malaysian Bar), https://cpd.malaysianbar.org.my/wp-content/uploads/2018/03/Noor-Asyikeen-CPD-LCAS-sept-2016.pdf
[8] Ibid.
[9] World Intellectual Property Organization, Guide to the Madrid System: International Registration of Marks under the Madrid Protocol (WIPO Publication No. 455E/24, 2024), https://www.wipo.int/edocs/pubdocs/en/wipo-pub-455-2024-en-guide-to-the-madrid-system-international-registration-of-marks-under-the-madrid-protocol.pdf
[10] Ibid.
[11] Noor Asyikeen bt Mohd Salleh, Malaysian’s Perspective towards Madrid Protocol Accession (2016) (CPD Online Publication, Malaysian Bar), https://cpd.malaysianbar.org.my/wp-content/uploads/2018/03/Noor-Asyikeen-CPD-LCAS-sept-2016.pdf
[12] Ibid.
[13] Intellectual Property Corporation of Malaysia (MyIPO), Applying for a Trademark, https://www.myipo.gov.my/applying-for-a-trademark/ (accessed 6 March 2026)
[14] Ibid.
[15] World Intellectual Property Organization, Madrid System – Filing International Trademark Applications: Basics and Process, https://www.wipo.int/en/web/madrid-system/how_to/file/basics
[16] Ibid.
[17] Jerome Gilson & Anne Gilson Lalonde, The Madrid Protocol: A Slumbering Giant Awakens At Last, 2003, p.21.
[18] Anuj Anand Malik, Is a Trademark Internationally Valid?, AMA Legal Solutions (7 February 2026), https://www.amalegalsolutions.com/is-trademark-internationally-valid/
