Processing Madrid trademark applications designating Vietnam

International trademark registration under the Madrid Agreement is becoming increasingly popular. Other members of the Madrid Agreement or Madrid Protocol who want to have their trademark protected in Vietnam will have to file a Madrid application with Vietnam designation, then the trademark can be protected in Vietnam. However, not all entities know how the processing of trademark applications under the Madrid Agreement that designates Vietnam takes place. To answer this question, Viet An Law Firm will present the article below.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law;

Madrid trademark applications designating Vietnam

Based on the content specified in Clause 14, Article 3 of Decree 65/2023/ND-CP, the Madrid application designating Vietnam can be understood as a Madrid application requesting trademark protection in Vietnam, originating from other members of the Madrid Agreement or Madrid Protocol. A trademark application under the Madrid Agreement that designates Vietnam is a Madrid application originating from other members of the Madrid Agreement and requires trademark protection in Vietnam.

A Madrid application designating Vietnam will include several features listed as follows:

• The subject: is an international trademark that is requested to be protected in Vietnam.
• Madrid applicant with Vietnam designation: Citizens of other member countries of the Madrid Agreement or Madrid Protocol;
• The authority of international trademark application designates Vietnam: for a Madrid application designating Vietnam, Vietnam will be the country that decides whether to protect the international trademark in Vietnam or not;
• The purpose of filing a Madrid application with Vietnam designation: is so that international trademarks from other countries that are members of the Madrid Agreement or Madrid Protocol are protected in Vietnam.

Processing Madrid trademark applications designating Vietnam

The trademark registration process under the Madrid Agreement designating Vietnam is prescribed by Vietnamese law in Article 27 of Decree 65/2023/ND-CP on detailed regulations of several articles and measures to implement the Law on Property. Accordingly, trademark registration applications under the Madrid Agreement that designate Vietnam will be processed in the following order:

• Step 1: Citizens from member countries of the Madrid Agreement who wish to have international trademark protection in Vietnam must submit a Madrid application with Vietnam designation.
• Step 2: After receiving notification from the International Bureau regarding the issue of the Madrid Application designating Vietnam, the state management agency on industrial property rights, i.e. National Office of Intellectual Property (NOIP), must receive the application for substantive examination.
• Step 3: Except for the cases specified in Clause 3 and Clause 10, Article 27 of Decree 65/2023/ND-CP, the substantive examination by NOIP on ownership industrial application must be carried out in the same way as for a trademark application filed under the national format.
• Step 4: From the date the International Bureau issues notice of the Madrid Application designating Vietnam, within 12 months, the state management agency on industrial property rights must conclude the ability to protect trademark protection to see whether the trademark can be protected in Vietnam or not.

After processing Madrid trademark applications designating Vietnam as listed above, there are two possible outcomes as follows:

• The Madrid application with Vietnam designation meets the approval requirements and the trademark is capable of being protected in Vietnam;
• The Madrid application designating Vietnam does not meet the requirements for approval and the trademark is not capable of being protected in Vietnam.

In case the protection requirements are met

In cases where the Madrid Application has a valid Vietnamese designation, and the trademark meets the protection conditions prescribed by Vietnamese law, NOIP must carry out procedures prescribed in Clause 2, Article 27 of Decree 65/2023/ND-CP. Specifically:

• Before the end of the 12 months from the date the International Bureau issues notice of the Madrid Application designating Vietnam, the state management agency on industrial property rights shall issue a decision to accept the protection of the registered trademark. international in Vietnam.
• After deciding to accept trademark protection, the state management agency in charge of industrial property rights must record it in the National Register of Industrial Property (Part of Internationally Registered Trademarks).
• Next, NOIP must send it to the International Bureau to declare international trademark protection in Vietnam.
• Within 2 months from the date the state management agency in charge of industrial property rights issues a decision, the above decision must be published in the Industrial Property Official Gazette.

Note: The scope (volume) of protection is determined based on the content required in the international trademark registration as recorded by the International Bureau and accepted by NOIP.

Grant of protection title

• In case an international trademark is accepted for protection in Vietnam, from the date of international registration the trademark is accepted for protection, at the request of the trademark owner, the state management agency on property rights. Industrial property grants certification of internationally registered trademarks protected in Vietnam on condition that the requester pays fees according to regulations.
• From the date the Madrid Application is published in the Official Gazette by the International Bureau until the date of the decision to accept protection, or 12 months have passed from the date the International Bureau issues a notice related to the Madrid Application designating Vietnam, depending on which time earlier if a third person has an opinion on this application, this opinion will be considered a reference source of information during the processing of the application.

In case of amendment or supplement (part of the application meets the protection requirements)

In cases where a trademark contains part or all of the goods or services that do not meet the protection conditions, or the trademark meets the protection conditions but the international registration is still lacking, the procedure must be followed. Processing of this application will be carried out as follows:

• Before the end of the 12 months from the date the International Bureau issues notice of the Madrid Application designating Vietnam, the state management agency on industrial property rights must issue a notice of temporary refusal. This notice must clearly state the content and reasons for the intended refusal and send such notice to the International Bureau.
• From the date the state management agency on industrial property rights sends a notice of temporary refusal for part or all of the goods or services, within 3 months, the applicant has the right to correct deficiencies or have objections to NOIP.

When the applicant corrects deficiencies or objects to the intended refusal of NOIP, this must be done according to the same procedures as for trademark registration applications filed under national procedures, including regulations relating to the method of applying.

In case the amendment meets the requirements

In case the applicant satisfactorily corrects deficiencies and/or has a valid objection to the intended refusal of part or all of the goods or services, the NOIP shall:

• Make a decision to accept the protection of an internationally registered trademark in Vietnam according to the corresponding scope of protection for eligible classes of goods and services;
• Recorded in the National Register of Industrial Property (International Registered Trademarks Section);
• Submit to the International Bureau a declaration of protection after notification of provisional refusal;
• Within 2 months from the date of the decision, the NOIP shall publish its decision in the Industrial Property Official Gazette.

In case the amendment does not meet the requirements

In cases where the applicant does not correct deficiencies or makes corrections but fails to achieve protection requirements, there is no objection or any irrelevant objection to the intended refusal notice, the NOIP shall:

• For goods and services that meet protection conditions, the same procedures will still be followed, such as making a decision to accept protection, recording it in the National Register of Industrial Property, and notifying the International Bureau of the protection declaration and publishing the decision in the Industrial Property Official Gazette;
• For goods and services that do not meet the protection conditions, the NOIP shall issue a decision to refuse to accept the protection of an internationally registered trademark in Vietnam and send it to the International Bureau to announce its refusal.

Note: Regarding the issue of international registration, there are still deficiencies which are due to the lack of regulations on the use of collective marks, certification marks, and lack of photos or drawings representing the three-dimensional trademark perspective.

Thus, it can be seen that processing a trademark application under the Madrid Agreement designating Vietnam is an extremely complicated matter. Therefore, when subjects intend to request international trademark protection in Vietnam under the Madrid Agreement, they should consider seeking support from IP reputable and experienced experts such as the team of lawyers and consultants of Viet An Law Firm.

Trademark registration service of Viet An Law

• Representing clients in filing and monitoring trademark applications under the Madrid Agreement;
• Consulting on trademark registration protection conditions in Vietnam;
• Consulting and supporting in monitoring the process of processing applications of foreign entities under the Madrid Agreement designating Vietnam;
• Client representatives responded to National Office of Intellectual Property;
• Advise on supplementing and completing incomplete applications at the request of the NOIP.

If you have any questions about processing Madrid trademark applications designating Vietnam, please contact Viet An Law for our best support!