International trademark registration under the Madrid Agreement is becoming increasingly common. Other members of the Madrid Agreement or the Madrid Protocol wishing to have their trademarks protected in Vietnam shall file a Madrid application designating Vietnam for the trademark to potentially be protected in Vietnam. However, not every entity knows how the processing of trademark applications under the Madrid Agreement designating Vietnam takes place. To answer this question, Viet An Law Firm will provide the following article.
Madrid Agreement – Madrid Protocol
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 application designating Vietnam
Based on the content stipulated in Clause 14, Article 3 of Decree 65/2023/ND-CP, a 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 the Madrid Protocol. This also means that a trademark application under the Madrid Agreement designating Vietnam is a Madrid application originating from other members of the Madrid Agreement and requesting trademark protection in Vietnam.
A Madrid application designating Vietnam will include some features listed as follows:
- Subject of the Madrid Application designating Vietnam: is an international trademark for which protection is requested in Vietnam.
- Entity filing the Madrid Application designating Vietnam: Citizens of other member countries of the Madrid Agreement or the Madrid Protocol;
- Entity protecting the international trademark upon filing the Madrid Application designating Vietnam: for a Madrid application designating Vietnam, Vietnam will be the country deciding whether or not to grant protection to the international trademark in Vietnam;
- Purpose of filing the Madrid Application designating Vietnam: is for the international trademark originating from other countries that are members of the Madrid Agreement or the Madrid Protocol to be protected in Vietnam.
Processing Madrid trademark applications designating 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. In addition, the National Office of Intellectual Property of Vietnam (NOIP) has announced the cessation of receiving industrial property registration applications in paper form starting from July 1, 2025, and will instead switch to online submission (e-filing) and result delivery via email. Accordingly, the procedure for processing a trademark application under the Madrid Agreement designating Vietnam is as follows:
- Step 1: Citizens from member countries of the Madrid Agreement wishing to have their international trademark protected in Vietnam shall file their application online through the NOIP’s e-filing system, as per the NOIP’s announcement.
- Step 2: Upon receiving notification from the International Bureau regarding the Madrid Application Designating Vietnam, the NOIP is responsible for receiving the online application to prepare 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 expiration of the 12 months from the date the International Bureau issues the notification about the Madrid Application Designating Vietnam, the NOIP issues a decision to accept protection for the international registered trademark in Vietnam.
- After the decision to accept trademark protection, the NOIP must record it in the National Register of Industrial Property (Section: International Registered Trademarks).
- Subsequently, the NOIP must send a statement of grant of protection for the international trademark in Vietnam to the International Bureau.
- Within 2 months from the date the NOIP issues the decision, the decision shall 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 a protection title for a trademark in Vietnam
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, by 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 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 the 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 successfully rectifies the deficiencies and/or submits a valid objection to the intended refusal of a part or the whole of the goods/services, the NOIP must:
- Issue a decision to accept protection for the international registered trademark in Vietnam according to the corresponding scope (volume) of protection for the goods/services that meet the protection conditions;
- Record it in the National Register of Industrial Property (Section: International Registered Trademarks);
- Send a statement of grant of protection after the provisional notice of refusal to the International Bureau;
- Publish its decision in the Industrial Property Official Gazette within 2 months from the date of the decision.
In case the amendment does not meet the requirements
In case the applicant fails to rectify the deficiencies, or rectifies them but does not meet the protection requirements, submits no objection, or the objection submitted is invalid against the NOIP’s intended refusal, the NOIP shall:
- For the part of goods/services that meet the protection conditions, procedures similar to issuing a decision to accept protection, recording in the National Register of Industrial Property, sending a statement of grant of protection to the International Bureau, and publishing the decision in the Industrial Property Official Gazette will still be performed;
- For the part of goods/services that do not meet the protection conditions, the NOIP issues a decision to refuse acceptance of protection for the international registered trademark in Vietnam and sends a notification of confirmation of refusal of protection to the International Bureau.
Note: Deficiencies related to international registration may include the lack of regulations on the use of collective marks or certification marks, or the lack of photos or drawings illustrating the perspective view of a three-dimensional mark, etc.
Thus, it can be seen that the processing of trademark applications under the Madrid Agreement designating Vietnam is a highly complex matter. Therefore, individuals and organizations intending to request international trademark protection in Vietnam under the Madrid Agreement should consider seeking assistance from reputable and experienced experts in this field, such as the team of Lawyers and Consultants at Viet An Law Firm.
Service for trademark registration under the Madrid Agreement of Viet An Law
- Representing clients in filing and monitoring trademark applications under the Madrid Agreement;
- Consulting on the conditions for trademark registration protection in Vietnam;
- Consulting and assisting in monitoring the process of application handling for foreign entities under the Madrid Agreement designating Vietnam;
- Client representatives responded to the National Office of Intellectual Property.
- Advise on supplementing and completing incomplete applications at the request of the NOIP.
If you have any concerns regarding processing Madrid trademark applications designating Vietnam, please contact Viet An Law for our best support!
