Madrid Agreement on international trademark registration

The Madrid Agreement on international trademark registration is an international convention, and when members participate in the agreement, enables the protection of trademarks in all countries to become easier. Vietnam is also one of the countries that have participated in this Agreement and to localize the provisions of this Agreement, Vietnam issued Decree 65/2023/ND-CP dated August 23, 2023. Further details about this issue will be presented by Viet An Law Firm in the article below.

Legal basis

• Madrid Agreement;
• Decree 65/2023/ND-CP dated August 23, 2023.

The main content of the Madrid Agreement Document on international trademark registration

According to the Madrid Agreement, citizens of each country participating in the Agreement, when registering for international protection, will receive protection for their trademarks in all other member countries. However, not all international protection claims can be protected but must meet certain requirements and conditions according to the provisions of the Madrid Agreement.

For example, regarding the conditions for registering trademark protection under the Madrid Agreement, the Madrid Agreement sets out the conditions for international registration of trademarks on goods as follows:

• The Madrid Agreement can only accept applications from individuals whose nationality is the nationality of a country that is a member of the Madrid Agreement or organizations that have legal business establishments in countries that are members of the Madrid Agreement.
• An international trademark registration application must be based on a basic registration application that has been filed with the National Office of Intellectual Property (NOIP) in countries that are members of the Madrid Agreement or must have a trademark registration certificate granted by the NOIP.
• Trademark registration will have to be carried out in a country that is a member of the Madrid Agreement.

In addition to these conditions, Article 3 of the Madrid Agreement also sets out requirements related to the content of the international registration application. Specifically, these requirements will include the requirements listed below:

• All international applications must be presented in the format prescribed by the Agreement. The authority in the country of origin must certify that the details set out in the application correspond to the details recorded in the country of registration, and must advise on the date of application, date of registration, application number, registration number, and date of filing of the international application.
• The applicant for international registration must indicate the goods for which protection of the mark is sought.
• If an applicant for international registration requests color as a distinctive sign of the mark, he or she must:
• A statement of the matter, submitted with the application, must indicate the color or combination of colors for which protection is sought;
• Enclosed with the registration application is a sample in the colors of that mark, which will be included in the notice published by the International Bureau.
• Along with several other requirements specifically listed in Article 3 of the Madrid Agreement Document.

Regarding the issue of the validity of international registration of trademarks, Article 4 of the Madrid Agreement has provisions on this issue. Specifically:

• From the date on which the international registration of the mark is carried out at the International Bureau by the provisions of Article 3 and Article 3ter, the protection of the mark in all relevant member states must be done as trademarks that are applied directly.
• All trademarks that are the subject of international registration enjoy priority rights under the provisions of Article 4 of the Paris Convention for the Protection of Industrial Property without being required to comply with other issues in the form specified in Clause D of this Article.

However, the validity of international trademark registration under the Madrid Agreement also has a certain period, and this issue has been specifically regulated in Article 6 of the Madrid Agreement Document. Accordingly, the validity period of international trademark registration will be as follows:

• Trademark registration at the International Office will be valid for 20 years. There is then still the possibility of extending the validity of the international registration according to the provisions of Article 7 of the Madrid Agreement.
• After the expiration of 5 years from the date of international registration, this registration will not be dependent on the previously nationally registered label.
• If within 5 years from the date of international registration, the previously nationally registered trademark in the country of origin is no longer partially or completely legally protected in that country, then regardless of whether the subject matter is transferred, The protection is also no longer valid in whole or in part.
• If, before the expiration of 5 years from the date of international registration, the protection is terminated due to a complaint, the validity of the partial or complete protection will also be terminated.
• In case the validity of an internationally registered trademark is suspended voluntarily, the Office of the country of origin will request the suspension of validity at the International Bureau, and this Bureau will carry out this suspension.

Thus, it can be said that the main content of the Madrid Agreement Document on the international registration of trademarks is to establish a simplified international trademark registration procedure. This helps applicants Protection applications can reduce costs and make it more convenient when registering trademark abroad.

Regulations of Vietnamese law related to the Madrid Agreement on international trademark registration

To localize regulations related to the Madrid Agreement on international registration of trademarks, the Government of Vietnam issued Decree 65/2023/ND-CP dated August 23, 2023, related to the issue of trademarks. The proposal details several articles and measures to enforce intellectual property law on industrial property rights.

Specifically, this Decree records provisions related to the Madrid Agreement. For example, in Clause 1, Article 10 of Decree 65/2023/ND-CP dated August 23, 2023, there is a regulation that industrial property rights for internationally registered trademarks under the Madrid Agreement are established on a basis for accepting protection from the state management agency on industrial property rights for that international registration.

Or as Article 25 to Article 28 of Section 4 Chapter I of the above Decree also reserves for regulations related to Madrid applications and handling of Madrid applications:

• Article 25: Madrid applications including contents such as classifying Madrid applications into Madrid applications with Vietnamese origin and Madrid applications with Vietnamese designation; The place to file Madrid applications with Vietnamese origin is at the state management agency for industrial property rights; The Madrid application file comes from a Vietnamese source; and Requirements imposed on Madrid applications of Vietnamese origin;
• Article 26: the handling of Madrid applications originating from Vietnam and related requirements, including the responsibilities of state management agencies on industrial property rights; Procedures related to filing, amending, supplementing applications, and receiving Madrid applications of Vietnamese origin.
• Article 27: the processing of Madrid applications that designate Vietnam, including content related to application filing, application processing, trademark conditions to meet protection conditions, and application processing in cases partial or full of trademark failure to meet protection conditions, application rejection deadlines for different cases, as well as complaint and complaint resolution procedures.
• Article 28: conversion of international trademark registration into an application filed according to the national format.

Thus, up to now, Vietnam has become an official member of the Madrid Agreement and still fully complies with the regulations outlined in this Agreement. In addition, to support domestic citizens in the international registration of trademarks under the Madrid Agreement more conveniently, Vietnam issued Decree 65/2023/ND-CP to provide more detailed guidance on the above issues.

However, properly understanding and fully implementing the regulations related to the Madrid Agreement and Decree 65/2023/ND-CP on international registration of trademarks is difficult. Therefore, individuals and organizations intending to internationally register trademarks should seek the support of experienced, reputable, and specialized experts such as a team of lawyers and consultants of Viet An Law Firm.

If you have any questions about the Madrid Agreement Document on international trademark registration, please contact Viet An Law for our best support!

Disclaimer: This article was last updated in December 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.