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Conditions for trademark registration under Madrid Protocol

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.

Legal basis

  • Madrid Protocol on international registration of trademarks;
  • Law on Intellectual Property 2005, amended and supplemented 2009, 2019, 2022;
  • Decree 65/2023/ND-CP detailing several articles and measures to enforce intellectual property laws on industrial property, protection of industrial property rights, rights to plant varieties, and housing management water on intellectual property;

What is the 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.

Conditions for trademark registration under Madrid Protocol

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:

  • The Madrid Protocol only grants and receives documents from individuals with the nationality of a country that is a member of the Madrid Protocol or an organization with a legal business establishment in a country that is a member of the Madrid Protocol.
  • The registration application needs to be based on the basic registration application submitted to the National Office of Intellectual Property or the trademark registration certificate issued by the National Office of Intellectual Property.
  • Trademark registration is conducted in a country that is a member of the Madrid Protocol.

Note:

  • Time limit for application examination: 18 months;
  • Protection term: 10 years (can be extended);
  • Application language: English or French.

Distinguish between the Madrid Protocol and the Madrid Agreement

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.

 

Conditions for trademark registration according to the Madrid Protocol

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:

Conditions for trademark registration under Madrid Protocol

Process of trademark registration under the Madrid Protocol – Viet An Law

Step 1: Research the possibility of trademark protection.

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.

Step 2: Prepare documents and apply for protection registration

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.

Step 3: Formality examination by WIPO and publish it in the official gazette

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.

Step 4. WIPO examines the formality and transmits the protection request to the Trademark Registration Office of the designated country

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.

Step 5: Issue a protection registration application or notify of refusal to grant a protection registration application

Within 16-18 months:

  • If the trademark office of the designated country does not issue a refusal notice, the trademark will automatically be protected in that country.
  • If the trademark office of the designated country has a reason not to accept trademark protection, it will send a Notice of temporary refusal to register that trademark to the trademark owner. The trademark owner will respond/appeal to the Notice of Rejection under the regulations of that member country.

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.

What does an international trademark application of Vietnamese origin need to meet?

  • An international trademark registration application designating at least one country as a member of the Madrid Protocol, including at the same time designating a country as a member of the Madrid Agreement, must be made in English or French;
  • The applicant must submit a declaration requesting international trademark registration according to the form in Appendix II of Decree 65/2023/ND-CP. The declaration needs to indicate the countries that are members of the Madrid Protocol in which the applicant wants to register trademark protection. An international trademark registration application must be made by filling in accurate and complete information in the fields for the applicant and must include trademark samples exactly like the trademark samples registered in Vietnam;
  • The applicant needs to roughly calculate the total amount of fees and charges according to the fee schedule printed on the application form or can request the National Office of Intellectual Property to notify the exact amount of fees and charges that need to be paid to the International Bureau. The applicant must pay those fees and charges directly to the International Bureau and must pay additional related fees and charges according to regulations. The applicant must ensure the information (especially on the name and address of the applicant, goods, services, and classification of goods and services) declared in the international trademark registration application is accurate, including language, translation, and consistency with other information recorded in the basic trademark registration certificate or application. The applicant is responsible for paying the fees incurred related to amendments and supplements to the international trademark registration application due to the declaration of inaccurate or inconsistent information according to the notice of the International Bureau;
  • All correspondence and transactions related to international trademark registration applications are carried out through the National Office of Intellectual Property, which is responsible for promptly notifying the applicant’s requests to the International Bureau and vice versa, following the provisions of relevant international treaties.

Documents for international trademark registration according to the Madrid protocol

  • 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 (basicregistration);
  • 02 MM18 declaration forms in English (if the application specifies the United States);
  • Power of Attorney to carry out procedures for an individual or Power of attorney to carry out procedures for an organization (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).

Madrid application method

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:

  • Head office of the Department of Intellectual Property, address: 386 Nguyen Trai, Thanh Xuan district, Hanoi city.
  • Representative office of the National Office of Intellectual Property in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.
  • Representative office of the Department of Intellectual Property in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang City.

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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