Trademark application according to the Madrid Protocol

What documents are required for organizations and individuals who want to register an international trademark under the Madrid system? This is a question asked by many Vietnamese entities before intending to register a trademark according to procedures. To answer that question for clients, Viet An Law will provide complete information about trademark registration documents under the Madrid Protocol to help subjects register trademarks as easily as possible.

Legal basis

• Protocol relating to the Madrid Agreement relating to the international registration of trademarks adopted in Madrid on 27 June 1989;
• 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 state management of intellectual property.

International registration of trademarks according to the Madrid system

International registration of trademarks is an international convention that records the agreement of member countries on the protection of trademarks of goods and services in all member countries.

The Madrid registration system includes:

• The Madrid Agreement on the international registration of trademarks on goods was signed in Madrid, Spain on April 14, 1891;
• The Madrid Protocol regulates the Madrid Agreement signed in 1989, to support the Madrid system to become more flexible and convenient for member countries due to differences in national laws.

With the current international registration management system of the International Bureau of WIPO, some procedures can be easily carried out by submitting requests online without the need to submit directly through an intermediary – Vietnam National Office of Intellectual Property (NOIP). Accordingly, businesses also save costs that must be paid to the NOIP. However, the country designated for protection in the international application must be a participating member of the Madrid Protocol.

After internationally registering a trademark under the Madrid system, businesses can easily expand trademark protection to other markets by making additional designed countries based on existing international registrations. Expanding the scope of registration territory under this plan easily meets the needs of market development by the business development strategy and financial situation of each enterprise.

Managing international registrations and maintaining validity is also simpler than national registrations. The validity period is uniform across countries, according to the terms of the international registration, so businesses only need to carry out the renewal procedure once for all countries, and deadline management is also easier compared to managing multiple deadlines across multiple national registrations. In case it is necessary to update information (name, address), the trademark owner only needs to carry out the change procedure once for international registration, without having to change each country.

Madrid Protocol on the international registration of trademarks

The Madrid Agreement was issued in 1891 with content on trademark protection that was formed very early with the participation of many member countries but many developed countries did not participate (including the European Union, and the United Kingdom, USA, Canada, Australia, Japan, Korea, Singapore,…), thus weakening this international alliance. Therefore, the Protocol was adopted in 1989 to correct the defects in the Agreement, contributing to further perfecting the international trademark registration system.

The Madrid Protocol is part of the Madrid system. With this system, we only need to complete the trademark registration procedure once in 1 country that is a member of the system, that trademark can be protected in the countries you specify in the registration application. This helps reduce time and procedures when performing tasks such as modifying, transferring, and extending licenses.

The fundamental difference between Madrid Agreement and Protocol

The main contents of the Agreement and the Protocol are the same, with the same provisions on the filing of international applications, the process and procedures for handling international applications, the validity of international registration, the relationship relationships between members of the system,… However, the provisions of the Protocol are more suitable to the practical needs of countries and intergovernmental organizations and therefore attract member participation.

Additionally, the Protocol has several provisions to overcome the shortcomings of the Agreement, including:

• Basis for registration: It is not required to wait until the trademark is granted a Trademark Registration Certificate in the host country to be able to carry out the procedures (only need to submit documents in the host country);
• Diversity application language: English, French, Spanish;
• Minimum review period: 18 months;
• Protection term: 10 years and can be extended;
• Conversion of international application to national application: The application remains valid at the designation in the designated countries and retains the designation date in case the application in the country of origin is suspended in its entirety or part of the list of goods/services if the designation is made within 3 months from the date of applying in the country of origin.

Conditions for filing trademark registration applications under the Madrid Protocol

Currently, international trademark registration is carried out under the Madrid system, including the Madrid Protocol and Agreement. Subjects wishing to register an international trademark need to follow the administrative process specified in the Madrid Protocol and Agreement.

Conditions for submitting an application under the Madrid Protocol include:

• Individuals with nationality in a country that is a member of the Madrid System or an organization with a legal business establishment in a country that is a member of the Madrid System have the right to apply for international registration under the Madrid System;
• An international trademark registration application under the Madrid System needs to be based on a basic application that has been submitted to the National Office of Intellectual Property or has been granted a Certificate of Trademark Registration by the National Office of Intellectual Property.

Trademark application according to the Madrid Protocol in Vietnam

The application for trademark registration under the Madrid Protocol in Vietnam is regulated as follows:

• 02 Declarations requesting international registration of trademarks of Vietnamese origin, typed according to form number: form number 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP ;
• 02 copies of Declaration MM2 Posted at website: http://wipo.int (language used is English);
• 05 attached trademark samples identical to the trademark in the registration application filed in Vietnam (basic application) or trademark registration certificate (basic registration);
• Copy of the Declaration to request issuance of Certificate of establishment trademark registration (in Vietnam) or Certificate of establishment trademark registration that has been issued;
• authorization letter(if the international trademark registration application of Vietnamese origin is filed through industrial property representation service organizations such as Viet An Law);
• 02 copies of MM18 in case of international trademark registration application with indication to the United States;
• Other relevant documents (if necessary).

Proof of payment of fees and charges must be submitted with the application:

• Preliminary appraisal fee paid to the National Office of Intellectual Property;
• Fees paid to the International Office are posted at the website: http://wipo. int

Above is the trademark application according to the Madrid Protocol in Vietnam. If you have related questions or need to register a trademark, please contact Viet An Law Firm for the best support!

Disclaimer: This article was last updated in October 2023. Laws may have changed since then. Please contact Viet An Law to confirm the information in this article is current and for any legal assistance.