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 extending internationally, especially with related to import and export activities. This is the reason why trademark registration under the Madrid protocol is becoming popular. The article below from Viet An Law will provide you with information about the conditions for trademark registration under Madrid Protocol.
The Madrid Protocol on the international registration of trademarks was signed in Madrid, Spain on April 14, 1891. The content of the Protocol is to establish a procedure for international registration of trademarks and reduce costs for applicants when registering trademarks abroad.
Currently, the Madrid Protocol has 130 members, including Vietnam.
In addition to meeting the same conditions as for domestic trademark registration, businesses when registering international trademarks according to the Madrid Protocol should pay attention to the following:
Note:
Criteria | Madrid Protocol | Madrid Agreement |
Registration ground | Trademark registration application or Trademark registration certificate in Vietnam | Trademark registration certificate in Vietnam |
Application conditions | Businesses can apply for international trademark registration immediately after filing a trademark registration application in the host country without having to wait until the trademark registration certificate is issued in that country. | Businesses can apply for international trademark registration after being granted a Trademark Registration Certificate in the host country |
Time limit for application examination | 18 months | 12 months |
Term of protection | 10 years (can be extended) | 20 years (can be extended) |
Application language | English or French | French |
The level depends on the Original Certificate in the country of origin | No mention of this issue | Protection will be invalidated if the Trademark Registration Certificate in the country of origin is canceled for any reason. |
To register the trademark under the Madrid Protocol, the applicant must clearly understand and comply with the process prescribed by intellectual property law. A summary diagram of the international trademark registration process under the Madrid Protocol is as follows:
Although this is an optional stage in the trademark protection registration process according to the Madrid Protocol, it is important when registering for trademark protection because when businesses want to register, they should research the possibility of protection of the trademark in advance to avoid risks when the international registration application is refused due to confusion with previous applications or other cases of refusal to grant applications according to regulations.
After a preliminary trademark search and ensuring that the trademark is not similar or confusing to protected trademarks in other countries, businesses can apply for international trademark protection according to the Madrid Protocol at the International Bureau of the World Intellectual Property Organization (WIPO) through the Intellectual Property Office.
After applying at the Intellectual Property Office, within 30 days from the date of receipt of the request, the Intellectual Property Office will send the trademark protection application to the International Bureau of WIPO. At this stage, the application will be assessed in terms of form, including the applicant’s status, trademark sample, application form, the list of goods and services. In case the application requirements are fully satisfied, international registrations will be recorded in the international register and published in the WIPO international trademark gazette.
The International Bureau notifies each participating party that receives a request for protection in an international application or designation (designation countries such as the US, Japan, and EU). From the date of international registration or subsequent designation, trademark protection in each designated participant will be the same as if the mark were filed directly with the office of that participant. Each participating party is assigned to examine the substance of the application within the time prescribed by the Madrid Protocol and then notify the results of the examination to the International Bureau.
Within 16-18 months:
The examination of applications under the Madrid system is carried out independently in each designated country. The refusal of protection in one country does not affect the validity of trademark protection or the process of considering protection in the remaining countries.
Vietnamese applicants can apply for international registration of a trademark of Vietnamese origin directly or via postal service to one of the application receiving points of the National Office of Intellectual Property, specifically:
In case of applying by post, the joint stock company needs to transfer money through the post office service, then photocopy the Transfer Receipt and send it along with the application to one of the above-mentioned application receiving points of the National Office of Intellectual Property to prove the amount paid.
Above is Viet An Law’s advice on trademark registration conditions under the Madrid Protocol. If you are interested in international trademark protection, please contact us for the best support!
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