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• ARISE+ IPR Madrid Protocol – A Practical Guide For Malaysian Entrepreneurs

The Madrid System is administered by the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. As of December 2019, the Madrid System has 106 members, which represents 122 countries.

By filing a single application in one language and by paying one set of fees a trademark owner can apply for protection in over 122 countries through MyIPO as Office of Origin. The Madrid System also allows for the renewal, or expansion of global trademark portfolio through one centralized system.

Membership to Madrid System is growing every year. To find out about the current Contracting Parties, please visit the WIPO’s Website . Additional information on the special requirements of Contracting Parties that the applicant intends to designate the international application is available on Madrid Member Profile 

ELIGIBILITY TO FILE AN INTERNATIONAL APPLICATION

Entitlement

To be entitled to use the Madrid System via Malaysia, applicants must indicate their entitlement to file the international application. Applicants must be:

• a citizen of Malaysia;
• a body or corporation incorporated or constituted under the law of Malaysia;
• a person domiciled in Malaysia; or
• a person who has a real and effective industrial or commercial establishment in Malaysia.

Basic mark

To file an international application, the applicant must have already filed an application for registration or registered a mark in Malaysia. This Malaysia application or registration is referred to as the basic application or registration, or simply the basic mark. The mark that is the basis of an international application is either registered or has been applied for.

The basic mark and the international application must:

• have the same owner(s)
• be identical mark(s)
• have the same or a narrower list of goods and/or services.

An application can be based on a single basic mark or multiple identical basic marks covering different goods and services.

Language of the International Application

The application must be in English.

Essential Information for the International Application

The application must contain:

• The applicant’ name and contact details
• A reproduction of the mark
• The designations of Contracting Parties in which protection is sought
• The list of the goods and services for which protection is sought

THE INTERNATIONAL TRADEMARK REGISTRATION PROCESS

FEES AND PAYMENTS

Any application for an international registration of trademark (MM2 & MP1) must be filed with the international Bureau through MyIPO accompanied by the prescribed fees.

Fees payable in connection with an application for international registration consist of:

1. Handling Fee Charged by MyIPO –The handling fee is due at the time of filing an international application and has to be paid to MyIPO directly in Ringgit Malaysia (RM200 per application).

2. Fees to be paid to WIPO directly-The fees for filing an application to obtain an international registration which are:

a) The basic fee:

• 653 CHF (black/white reproduction of the mark); or
• 903 CHF (reproduction of the mark is in colour)

AND

b) Fees for designated country

• A complementary fee 100 CHF per designated country; and
• A supplementary fee 100 CHF per class of goods and/or services beyond three classes in the international application.

     OR

• An individual fee for those designated countries that require it. This fee replaces both complementary and supplementary fees

FEE CALCULATOR

When calculating fees, it is recommended that the applicants use the WIPO’s Online Fee Calculator available on the Madrid System website to estimate the cost of the international application at the following address 

In selecting the relevant date in the drop-down menu of the online Fee Calculator, applicants should select a date closest to the date the international application is submitted to MyIPO or else the fees indicated may not be accurate.

PAYMENT METHODS TO WIPO

Fees must be paid in Swiss Francs. Payment of fees must be made directly to the International Bureau (IB) of WIPO.

There are a number of ways that fees can be paid to WIPO:

1. Direct debit from account opened with WIPO 
2. Bank transfer to the WIPO bank account

Please ensure to indicate the required information to enable the IB to confirm receipt of the payment, such as fee amount, and the basic application or registration number as the payment ID in the space provided.

For payment of fees notified in WIPO irregularity letters or other WIPO communications, payment can be via WIPO’s E-Payment service . These payments may be made by credit card or through a WIPO Current Account. A WIPO reference number is required when using the e-Payment service.

See WIPO’s Fees and Payments information or contact WIPO directly for any questions relating to payments (Contact Madrid Service).

The Madrid Customer Service team can also be contacted on:

Telephone: +41 22 338 86 86
Opening hours: Monday – Friday, 9:00am to 6:00 pm (Geneva time)

Internet: https://www3.wipo.int/contact/en/madrid/