Conditions for 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 internationally, especially with related businesses related to import and export activities. The article below from Viet An Law will provide you with information about the conditions for trademark registration under the Madrid agreement.

Legal basis

• Madrid Agreement on the International Registration of Trademarks;
• Law on Intellectual Property 2005, as 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 Agreement?

The Madrid Agreement on the international registration of trademarks was signed in Madrid, Spain on April 14, 1891. The content of the Agreement was to establish a procedure for international registration of trademarks to simplify and Streamline trademark registration and reduce costs for applicants when registering trademarks abroad. Currently, the Madrid agreement has 55 members, including Vietnam.

Conditions for trademark registration under the Madrid agreement

In addition to meeting the same conditions as for domestic trademark registration, businesses when registering an international trademark under the Madrid Agreement should pay attention to the following:

• The Madrid Agreement only accepts applications from individuals with the nationality of a country that is a member of the Madrid Agreement or an organization with a legal business establishment in a country that is a member of the Madrid Agreement.
• 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 agreement. Countries customers want to specify such as USA, Japan, and EU.

Note:

• Time limit for application examination: 12 months
• Protection term: 20 years (can be extended)
• Application language: French

Trademark registration registration process under the Madrid agreement

Step 1: Research the possibility of trademark protection

Although this is an optional stage in the trademark protection registration process according to the Madrid Agreement, it is important when registering for trademark protection because when businesses want to register, they should look up the possibility of protection in advance. The trademark owner needs to register 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 conducting a preliminary trademark search and ensuring that the trademark is not similar or confusing to protected trademarks in other countries, the enterprise can apply for international trademark protection according to the agreement. Madrid at the International Bureau of the World Intellectual Property Organization (WIPO) through the Intellectual Property Office.

Step 3: Formality examination of application 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. Here, the application will be assessed in terms of form, including the applicant’s status, trademark sample, application form, and list of goods and services. In case the application requirements are fully satisfy, international registrations will be recorded in the international register and published in the WIPO international trademark gazette.

Step 4. WIPO 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 Agreement 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 designating country does not issue a refusal notice, the trademark will automatically be protected in that country.
• If the trademark office of the designating 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.

International trademark registration documents according to the Madrid agreement

• 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 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).

Note:

• Private enterprises need 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. Enterprises must pay those fees and charges directly to the International Bureau and must pay additional related fees and charges according to the regulations of the National Office of Intellectual Property.
• Private enterprises must ensure that the information (especially the name and address of the enterprise, goods, services, and classification of goods and services) declared in the international trademark registration application is accurate, including in terms of language, translation, and consistency with the information stated in the label registration certificate establishment trademark or corresponding establishment trademark registration application. Enterprises are responsible for paying fees incurred related to amendments and supplements to international trademark registration applications due to the declaration of inaccurate or inconsistent information as notified by 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 requests of private enterprises to the International Bureau and vice versa, following the provisions of relevant international treaties.

Madrid application form

The applicant can submit an application 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.

Above is Viet An Law’s advice on conditions for trademark registration under the Madrid agreement. If you are interested in international trademark protection, please contact us for the best support!