Madrid System for International Trademark Registration in Vietnam

Most countries around the world apply the territorial principle to intellectual property rights in general and trademark rights in particular (with a few exceptions, such as the Benelux trademark or the European Union Community trademark). As a result, for a trademark to be protected in a specific country, it must be registered or designated for registration in that country in order to obtain exclusive rights. Currently, trademark copying has become increasingly common across many countries worldwide, including Vietnam. Therefore, when goods are exported, intended to be exported, or when services are provided abroad, trademark owners must promptly register their trademarks in the respective countries. There are two common methods for international trademark registration: direct registration in each individual country (commonly referred to national registration) and registration under the Madrid System. In this article, Viet An Law will provide the insight into the trademark registration process under the Madrid System.

What is Madrid System?

The Madrid System is an international trademark registration system administered by the International Bureau of the World Intellectual Property Organization (WIPO). It was established to facilitate the registration of trademarks in multiple countries simultaneously. (Applicants can access information related to the system at: https://www.wipo.int/madrid/en/). Until 2025, the Madrid System has 115 members, covering 131 countries and territories. The most recent member to join is Qatar.

The Madrid system is governed by two main legal documents: the Madrid Agreement and the Madrid Protocol. Vietnam has joined the Madrid Agreement and the Madrid Protocol, so Vietnamese businesses can apply to countries that are members of both documents.

Procedures to file an trademark registration under Madrid system (Source: WIPO)

Advantages of international trademark registration through the Madrid System

• A key advantage of the Madrid System is that applicants can file a single application to obtain protection in mutiple jurisdictions. With one application, protection can be sought in all 115 members, covering 131 countries and territories.
• The application can be filed in a single language, with one-time payment of fees (subject to certain exceptions), and in a single curency.
• Post-registration management (such as amendments, assignment of rights, cancellations, etc.) is more convenient, cost-effective, and time-efficient; simplifying procedures for applicants.
• Application costs are significantly lower (approximately 30-70%) compared to national filings, as applicants are not required to pay for local legal representatives, translation, or international courier services).
• As a result, the Madrid System is being chosen by individuals and businesses for registering their trademarks internationally.
• Applicants may also claim the priority date of the international applications as the filing date of the basic application submitted to the Intellectual Property Office of Vietnam, without the need for a priority document, translation, or priority fee as the international application is filed within six months from the filing date of the basic application in Vietnam.
• For those seeking trademark protection in Europe and Africa, the Madrid System offers the opportunity to obtain exclusive rights across the EU (27 countries) and the African Intellectual Property Organization (OAPI – 17 countries) simply by designating the EU and OAPI, as both are members of the Madrid System.

Disadvantages of international trademark registration through the Madrid System

• The Madrid System is not suitable for collective or certification marks, as these types often lack specific classification options on Form MM2 and cannot be filed with their regulations of use, which increases the likelihood of refusal in designated countries.
• There is a risk of central attack, meaning that if the basic application or registration is cancelled or refused within the first 5 years in the country of origin, the entire international registration will automatically lose its effect.
• The system is not ideal for non-traditional marks, such as 3D or sound marks, which are more likely to be refused in the country of origin. If refused, the entire international registration will be invalidated due to the principle of central attack (mentioned above).
• Priority disputes in the United States are difficult to handle as the U.S. does not allow applicants to base international applications on use-based applications under Section 1(a). Instead, applicants must use the basis under Section 66(a) and submit Form MM18 – the Declaration of Intention to use the mark – when filing the international application via Form MM2.
• The assignment of international trademark registration is restricted. The assignee must have the same nationality, domicile, or a real and effective industrial or commercial establishment in a Madrid member country. This requirement limits the flexibility compared to national trademarks. Some countries may even refuse the assignment if it is seemed misleading.
• Licensing, division, or merger of international registrations cannot be carried out effectively in many designated countries. As a result, the Madrid System’s advantage of “one application, one procedure” is not practical in several jurisdictions such as OAPI, Brazil, Canada, China, Japan, Korea, Singapore, and Russia.
• It is difficult to control issues arising from errors or oversights by the intermediary authority (WIPO) during the international registration process, such as misclassification of the type of trademark. This may lead to unnecessary refusals or require reevaluation based on each country’s domestic trademark laws.

Legal documents governing the Madrid System for international trademark registration in Vietnam

• The Madrid Agreement;
• The Madrid Protocol;
• The Common Regulations under the Madrid Protocol;
• The Law on Intellectual Property 2005, as amended in 2022;
• Decree No.65/2023/ND-CP dated August 23, 2023;
• Other relevant legal documents.

Conditions for filing a trademark application under the Madrid System

• A Madrid application must be based on a basic application or basic registration, which simply means that a trademark application under the Madrid System must have been filed with or granted by the Intellectual Property Office of Vietnam (this is a mandatory requirement);
• The trademark specimen and the list of goods/services in the Madrid application must be identical to those in the application filed or the registration granted in Vietnam;
• The applicant or trademark holder must be a Vietnamese or have a business establishment (commercial presence) in Vietnam;
• The designated countries in the Madrid application must be members of the Madrid System;
• There is a two-month period to claim the filing date in the country/party of origin;
• The five-year dependency period applies.

Required documents for a trademark application under the Madrid System in Vietnam

• Power of Attorney (if the application is filed through a representative organization);
• One Vietnamese-language application form (for establishing rights, use Appendix II – Form No. 01; for other requests such as subsequent designation or renewal, use Form No.08/ SDQT)
• Two English-language application forms (MM2, MM4 to MM24, depending on the intended use) – these can be downloaded from the WIPO website or obtained through Viet An Law for specific assistance;
• Two MM18 forms (if the application includes designation of the United States);
• Two copies of the trademark specimen;
• Receipt of payment for application processing fees issued by the Intellectual Property Office of Vietnam;
• Declaration of use of the trademark (required depending on the designated countries);
• Other supporting documents (if any).

Types of fees to pay when registering a trademark under the Madrid System

Fees paying to the Intellectual Property Office of Vietnam (IPVN)

• Fee for processing an Madrid System for international trademark registration in Vietnam (excluding fees paying to WIPO): VND 2.000.000 (for applications requesting the establishment of rights);
• Fee for amending a Madrid system trademark application: VND 1.000.000 (applies to other requests such as amendments, renewals, etc.).

Fees paying to WIPO for International Trademark Registration under the Madrid System

After receiving notifications from IPVN and WIPO, the applicant must pay the following fees:

• Basic fee;
• Supplementary fee;
• Complementary fee;
• Individual fee (if applicable to designated member countries).

Service fees for trademark registration under the Madrid System

When filing through an authorized representative, the applicant is required to pay a representation service fee to the Intellectual Property Representative Organization. This fee is determined by the service contract between the parties and may vary depending on each company’s independent pricing policy.

Filing locations for trademark applications under the Madrid System

Applicants may submit their Marid system trademark application through one of the following methods:

• In person at the Registration Office of the Intellectual Property Office of Vietnam (IPVN) headquarters or its representative offices in Hanoi, Ho Chi Minh City, and Danang;
• Online submission via the Internet;
• Postal mail.

Procedure for processing trademark applications under the Madrid System

Stage 1: Filing a Trademark Application under the Madrid System with the Intellectual Property Office of Vietnam (IPVN)

The applicant shall file a trademark application under the Madrid System with the Intellectual Property Office of Vietnam (IPVN). At the same time, the applicant must pay the official fees for the application.

The IPVN proceeds to receive and acknowledge the submission of the application

Stage 2: Examination and processing of the Madrid Application by the IPVN, and Issuance of fee notification

If the Madrid application is complete and free of deficiencies:

• The IPVN issues a fee notification to enable the applicant to pay the relevant fees to WIPO;
• The IPVN, at the same time, transfers the application to WIPO;
• The applicant should submit payment receipts and any necessary corrections to the IPVN in order to finalize the application file;
• After the transfer, the IPVN issues a notification to inform the applicant and enable them to monitor the application’s progress.

If the Madrid application contains deficiencies:

• The IPVN issues an official notice requesting the applicant to rectify the deficiencies;
• After the completion of the corrections, the IPVN issues the fee notification and resumes the process as outlined above;
• If the applicant fails to rectify the deficiencies within three (03) months, the application should be deemed withdrawn.
• After the application is transferred to WIPO, if WIPO issues any notifications, the IPVN will coordinate with the applicant and WIPO to address the matter according to the provisions of the Madrid System.

Stage 3: WIPO transfers the International Trademark application to the designated countries

After WIPO completes the formalities check, it transfers the international application to the designated countries.

Stage 4: Substantive examination by the designated countries

Each designated country proceeds to examine the application substantively according to its national laws and regulations.

Stage 5: Completion of examination and notification of results by the designated countries

• The designated countries notify WIPO of the examination results;
• WIPO records the results in the International Register, publishes them in the WIPO Gazette of International Marks, and sends the notifications to the applicant via email;
• In the case of a provisional refusal, the applicant may respond with arguments or amendments, subject to each country’s procedures.

Special note on the Issuance of Trademark Protection under the Madrid System

Most member states of the Madrid System issue a declaration of protection if no grounds for refusal are found within the 12 or 18 months of examination. However, a few countries issue an official electronic certificate of registration instead of a declaration of protection such as the United States, South Korea, and Japan.

Actions required when an International Trademark application under the Madrid System is refused

An international trademark application under the Madrid System may be refused for various reasons, both due to formal deficiencies in the application and because the nature of the trademark does not meet the protection standards of the designated countries. Each designated country will specify a deadline from 1 to 6 months, depending on the jurisdiction, for the applicant to respond, amend, or present arguments. Common features of such procedures include:

• Most countries require the response to a provisional refusal to be submitted through a local representative or attorney with a registered address in the concerned country;
• The response must be submitted within the stipulated timeframe;
• The first response might not necessarily be accepted and further correspondence may be required;
• Response to a refusal can occur additional costs;
• Payment of foreign fees often involves complex documentation and procedures;
• If the response lacks legal basis or persuasive reasoning, the refusal is unlikely to be overturned.

As a result, when an international trademark application is refused under the Madrid System, to reduce costs and receive precise legal guidance, it is advisable for applicants to consult a reputable service provider or intellectual property firm. On-time consulting service ensures compliance with deadlines in order to protect the applicant’s rights and interests.

Monitoring International Trademark applications under the Madrid System

• For optimal tracking and management of your international trademark applications, customers are strongly advised to monitor their applications through eMadrid:https://www.wipo.int/en/web/emadrid, the official WIPO platform offering real-time updates and secure access to all application-related information
• To monitor the status of an international trademark application, applicants may use the Madrid Monitor tool available   at: https://www.wipo.int/madrid/monitor/en/index.jsp
• Notifications from WIPO and the Intellectual Property Office of Vietnam (IP Vietnam) will be sent via email, provided that the applicant has indicated their email address in the application form.

Viet An Law Firm’s services for Trademark Registration under the Madrid System in Vietnam

• Preliminary consultation before representing clients in completing the necessary procedures with competent state authorities regarding international trademark registration under the Madrid System;
• Conducting trademark searches and providing clients with written search results;
• Preparing application dossiers, representing clients in submitting applications, and monitoring the status of Madrid applications;
• Notifying, advising, and handling any deficiencies or refusals issued by competent authorities during the application process (if any);
• Receiving official documents, including notices and certificates of registration, and delivering them to clients (if applicable).

For clients seeking to register through the Madrid System, please contact Viet An Law Firm – an Intellectual Property Representative – to receive the fastest support at the most reasonable cost!