Trademark registration under the Madrid Agreement

In the current context of increasingly integrated economic integration, the issue of trademark protection is not only concerned and implemented on a national scale but also has an international nature, especially for related businesses to import and export activities. Registering a trademark abroad will help businesses penetrate, create, and stably develop markets in export markets. Registering trademark protection abroad is carried out through two common forms: direct registration in each country or international trademark registration according to the Madrid system. In the following article, Viet An Law will answer questions related to trademark registration under the Madrid Agreement in Vietnam.

Legal basis

• Madrid Agreement of 1891.
• Protocol relating to the Madrid Agreement 1989.
• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and housing management intellectual property country.

Detailed legal basis of Vietnam guiding applications under the Madrid Agreement (applied from August 23, 2023)

Section 4 (Application and processing of Madrid applications) of Decree 65/2023/ND-CP officially takes effect from August 23, 2023, detailing the contents related to applications and processing of trademark registration applications according to the Madrid agreement. These new regulations have been inherited from the regulations on Madrid Applications of Decree 103/2006/ND-CP (Article 12) and procedures for handling Madrid Applications at Point 41 of Circular 01/2007/TT-BKHCN with technical adjustments to comply with Madrid’s new regulations and examination practices.

Regulations on Madrid application

• Madrid Application includes Madrid Application with Vietnamese origin and Madrid Application with Vietnamese designation.
• For Madrid Applications with Vietnamese origin, the applicant must submit them through the Vietnam National Office of Intellectual Property.
• Madrid application with Vietnamese origin includes documents as described above.
• Madrid applications with Vietnamese origin must meet the form and content requirements as prescribed. The applicant must fill in the information in the declaration completely, accurately, and according to regulations, consistent with the information recorded in the basic application or basic registration.

What is the Madrid Agreement?

The international registration system (Madrid system) is an international system for trademark registration in many countries around the world. The legal basis of this system is the Madrid Agreement on the international registration of trademarks in effect since 1891 and the Protocol related to the Madrid Agreement since 1996.

The Madrid Agreement is the legal basis of the Madrid international registration system – origins on two legal origins including the Madrid Agreement and the related Protocol to the Madrid Agreement.

Conditions for registering trademark registration under the Madrid Agreement

• The Madrid System only accepts applications from individuals with nationality who are members of the Madrid System or organizations with legal business establishments in countries that are members of the Madrid System.
• Narrowing the scope of registration origins compared to the Madrid Protocol, registration applications under the Madrid Agreement need to be original on the basic registration application filed with the National Office of Intellectual Property or the trademark registration certificate approved, i.e. trademark protection in the origin country has been successfully established. The Protocol only requires that the applicant has filed a protection application in the origin country to be able to file an international application.
• Trademark registration is conducted in 01 country that is a member of the Madrid System. The countries specified in the international trademark registration application must be members of the Madrid Agreement such as the US, Japan, and the EU.

Procedure for trademark registration under the Madrid Agreement

All trademarks granted a Trademark Registration Certificate in Vietnam have the right to register an international trademark under the Madrid Agreement.

Registration documents under the Madrid Agreement

Madrid Application includes Madrid Application with Vietnamese origin and Madrid Application with Vietnamese designation.

For Madrid Applications with Vietnamese origin, the applicant must submit them through the state management agency on industrial property rights, i.e. the Vietnam National Office of Intellectual Property. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application with Vietnamese origin includes the following documents:

• Declaration requesting international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declaration forms according to the International Bureau’s form in English or French;
• 02 trademark samples identical to the trademark in the registration application filed in Vietnam (basic application) or trademark registration certificate (basic registration);
• 02 MM18 declaration forms in English (if the application specifies the United States);
• Power of Attorney in Vietnamese (if the application is submitted through a representative);
• Proof of payment of fees for carrying out international registration procedures for trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Note:

• The name and address of the application owner must be consistent in all application documents.
• If the goods or services requiring protection in the designated countries are different, list a separate list for each corresponding country and do not exceed the scope of protection of the Trademark Registration Certificate issued in Vietnam.

Registration process under the Madrid Agreement

Step 1: Research the trademark

This is not a mandatory stage. However, businesses that want to register an international trademark in this form should conduct a search in advance for the possibility of trademark registration to avoid the risk of the international trademark registration application being rejected due to similar reasons confusing with registration applications or protected trademarks in each country. Businesses can use free national and international data origins (e.g. WIPO Madrid Monitor, designated country data origin).

After meeting the above conditions and ensuring that your trademark is not confusingly similar to the registration application or protected trademark in each country, the enterprise can apply for international trademark registration under the Madrid system at the International Bureau of the World Intellectual Property Organization (WIPO) through the National Office of Intellectual Property.

Step 2: Prepare application documents after obtaining feasible trademark search results

Time is 3-5 working days from receipt of sufficient information and documents provided by the client.

Step 3: Submit an international trademark application

After receiving the Madrid Application with Vietnamese origin, the state management agency on industrial property rights is responsible for examining the form of the application dossier as requested. The applicant has the right to correct errors according to the notice within 3 months from the date of notification.

In case the application is valid, the National Office of Intellectual Property issues a notice of payment of fees that the applicant must pay directly to the International Bureau, sign the application, and transfer the application to the International Bureau within 15 days. days from the date of notice of fees.

In case the application has errors, the state management agency in charge of industrial property rights shall notify the applicant to correct the errors. In case the applicant does not correct the errors within 03 months from the date the state management agency in charge of industrial property rights issues the notice, the application will be considered withdrawn;

In case the application has no errors or has errors but the applicant has corrected the errors satisfactorily, the state management agency for industrial property rights will issue a notice of fees that the applicant needs to pay. Submit directly to the International Office, sign and confirm the application, and transfer the application to the International Bureau within 15 days from the date of notification;

Step 4: Monitor the progress of the trademark application

• The date the state management agency on industrial property rights receives the Madrid Application originating in Vietnam will be considered the international registration date of that application in case the International Bureau receives the application within 02 months from the date recorded on the application receipt stamp of the state management agency on industrial property rights. In case the application is not completed and sent to the International Bureau within the above time limit, the date of receipt of the application at the International Bureau will be considered the date of international registration. After the Madrid Application with Vietnamese origin is submitted to the International Bureau, the state management agency for industrial property rights notifies the applicant and continues processing (coordinate with the applicant if necessary) notices, requests from the International Bureau, or other matters related to the application (if any).
• WIPO will conduct a formal examination of the application. If valid, the application will be translated into other languages and published in the Industrial Property Gazette. The application will then be submitted to the Trademark registration office of the designed states. At the same time, set a starting date for calculating the substantive examination period of 12 months (according to the Agreement) or 18 months (according to the Protocol). If after the above time limit, WIPO does not receive any response, the trademark is automatically considered valid in those countries.

The National Office of Intellectual Property will be the intermediary agency that coordinates with the applicant if necessary to process the international trademark application.

Step 5: Receive the results of trademark registration

WIPO will be the intermediary to transfer official dispatches and issued trademark registration certificates (if any) from the trademark registration agency in the designated country to the trademark registration agency in the origin country and the applicant in the origin country.

Request to amend the Madrid application originating from Vietnam to be granted an international registration number

Dossier for amending the Madrid application originating from Vietnam is granted an international registration number

Requirements to be implemented after a Madrid Application with Vietnamese origin is granted an international registration number such as the following designation (expanding the protected territory), modifying the name and address of the international registered owner, and limitations List of goods and services, an extension of international registration validity, the appointment of the representative, change of representative, recording of transfer of international registration, etc. can be done directly with the International Bureau or through the state management agency on industrial property rights. In case of filing through the state management agency on industrial property rights, the applicant needs to submit the following documents:

• Request declaration according to Form No. 02 in Vietnamese in Appendix II of Decree 65/2023;
• 02 corresponding declarations according to the form of the International Bureau;
• Power of Attorney in Vietnamese (in case the request is submitted through a representative);
• Documents for payment of examination fees for amendments, transfers, extensions, territorial expansion, limits on the list of goods and services, termination, invalidation of internationally registered trademarks of Vietnamese origin, etc.;
• Other relevant documents (if necessary).

Procedure for processing amendments to Madrid applications with Vietnamese origin

After receiving the above documents, the National Office of Intellectual Property will process and amend the Madrid Application with Vietnamese origin and be granted an international registration number as follows.

• In case the requested dossier contains errors, the state management agency in charge of industrial property rights shall notify the applicant to correct the errors. In case the applicant does not correct the errors within 03 months from the date the state management agency in charge of industrial property rights issues the notice, the request will be considered withdrawn.
• In case the requested dossier has no errors or has errors but the applicant has corrected the errors satisfactorily, the state management agency for industrial property rights will issue a notice of fees for the applicant to pay. directly to the International Bureau, sign to confirm the request, and transfer the request to the International Bureau within 10 days from the date of the fee notice.

Regulations on renewal of international registration Madrid application

In case of a request to extend an international registration submitted through the National Office of Intellectual Property, the applicant needs to submit it no earlier than 06 months and no later than 01 month from the date of expiration of that international registration. If a request is made to extend the validity of the international registration during the extended period, the request dossier must be submitted to the state management agency on industrial property rights no later than 01 month from the date of expiration of the grace period.

Location for filing a trademark registration application with Madrid application in Vietnam

• National Office of Intellectual Property (Hanoi)

Address: 384-386, Nguyen Trai Street, Thanh Xuan District, Hanoi.

• Representative office of the Department of Intellectual Property (Ho Chi Minh City)

Address: 7th Floor, Ha Phan Building, No. 17 – 19 Ton That Tung, Pham Ngu Lao Ward, District 1, City. Ho Chi Minh.

• Representative office of the Department of Intellectual Property (Da Nang City).

Address: 3rd Floor, 135 Minh Mang, Khue My Ward, Ngu Hanh Son District, Danang City.

Benefits of trademark registration under the Madrid Agreement

Cost savings

Registering a trademark in each independent country will cost a lot of money, especially procedure fees. Registering a trademark under the Madrid Agreement allows trademarks to be protected in member states. From there, businesses can export their goods and services abroad. This is the top choice of small and medium-sized enterprises aiming to expand their business scope.

In addition, the trademark owner only has to submit a single application, in a single language, French, and only has to pay fees to one agency, instead of having to make multiple applications, each in a different language and fee. more expensive fees.

High efficiency

The Madrid Agreement allows organizations/individuals to register for exclusive protection in many countries with just one single procedure but with long-term effectiveness.

The term of exclusive protection under the Madrid Agreement is up to 10 years and can be extended.

Trademark registration service under the Madrid Agreement of Viet An Law Firm

• Legal advice on trademark registration conditions under the Madrid agreement.
• Consulting on the feasibility of being granted a title of exclusive protection of a trademark when registered under the Madrid agreement.
• Free initial trademark search.
• Official trademark search at the Intellectual Property Office, WIPO – independent costs.
• Consulting on trademark registration processes and procedures according to the Madrid agreement.
• Drafting trademark registration documents according to the Madrid agreement.
• Trademark registration representative for clients during the trademark registration process under the Madrid agreement.
• Submit documents and monitor the registration and examination process at the National Office of Intellectual Property and international registration agencies.
• Representing clients throughout the entire process of establishing rights and responding to official correspondence with the National Office of Intellectual Property and the international trademark registration agency regarding trademark registration under the Madrid agreement.
• Exchange and provide information to customers in the process of registering trademark protection under the Madrid agreement.
• Objecting and complaining about contents related to trademark registration applications under the Madrid agreement.
• Receive the trademark protection certificate and return it to the customer.

Clients who need advice on trademark protection registration services under the Madrid Agreement, please contact Viet An Law Firm for the best support.