Madrid system for trademark registration in Vietnam

Overview

According to the provisions of current law, trademarks are registered and protected according to the territorial principle (except for some exceptions such as Benelux trademark, EU common mark…). On the other hand, trademark appropriation globally is becoming more common and sophisticated in many countries around the world including Vietnam. Therefore, when goods/ services are (intended) exported or performed abroad, it is necessary for the trademark owner to promptly register trademark in that country. There are two common ways to register a trademark abroad: (i) direct registration in each country and (ii) international trademark registration under the Madrid system.

The Madrid system

The Madrid system is a system of international registration of marks managed by the International Bureau of the World Intellectual Property Organization (WIPO), created to facilitate the registration of trademarks simultaneously in many contracting countries (Applicants can search for information related to the System at  https://www.wipo.int/madrid/en/members/).

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)

Valid application

The first condition of a valid application is that the basic application has been filed with the Office of a Contracting State or where the basic registration has been made by such an Office. Additionally, to have the right to apply internation trademark under Madrid Protocol, the person in whose name that application or registration stands shall:

• be a national of that Contracting State, or
• be domiciled, or
• has a real and effective industrial or commercial establishment, in the said Contracting State

If applicant have more than a Contracting States (for example, applicant may be a United States citizen living and business in Vietnam, provided that his/her trademark have basic application or further registration in both countries), he/she has entitled to choose any of these contracting states to file the international application.

To determine if you are eligible to file an international application under the Madrid System, use the International Application Simulator.

An international trademark registration application can be drafted in one of three languages: English, French or Spanish (Vietnam claims to use two languages, English and French). Based on a basic application or a basic registration, the applicant will submit an international application through the Office of the country of origin which will then be forwarded to the International Bureau of WIPO.

Procedure of trademark registration

International Bureau of WIPO, the application will be examined in terms of form, including the applicant’s status, trademark sample, list of good/service, etc. In case all requirements are satisfied, an application for international registration will be recorded in the international register and published in the WIPO International Trademark Gazette. The International Bureau notifies each Contracting Party that has received a request for protection in the international application or following designation. From the date of international registration or following designation, the protection of the mark in each designated Contracting Party shall be the same as if the mark was filed directly with that Contracting Party’s Office. Each designated Contracting Party examines the application within the period specified by the Agreement or the Protocol and then communicates the results to the International Bureau.

Application fee

Fees payable for an international trademark application include the basic fee, the separate fee for the designated contracting state that has claimed to receive its own or additional fees and surcharges (if any) in the case of appointing a party that does not claim to receive a separate fee. Applicants can use the online fee calculator provided by WIPO at  https://www.wipo.int/madrid/en/fees/calculator.jsp .

With the advantage of simple procedures (only need to submit a single application, in a single language, pay fees in a single currency), it saves time and costs for applicants in case registered in many countries at the same time. The Madrid system is increasingly being chosen by businesses to register their trademarks abroad.

For further information, kindly refer to the article Procedure of international trademark registration under the Madrid Protocol for following procedure or Compare the Madrid Protocol and the Madrid Agreement. Customers wishing to register trademarks under the Madrid system, please contact Viet An Law for detailed support! We sincerely thank for your attention.