Register an international trademark under the Madrid system

(valid from August 23^rd 2023)

Enterprises wishing to create and develop brands, export goods or provide services abroad should promptly register international trademarks. International trademark registration will help enterprises to create, maintain and develop in export markets, to prevent all infringements, unfair competition or misappropriation of competitors and profiteers. There are two common ways to register an international trademark is directly register in each country and register as an international trademark under the Madrid system. So how to register an international trademark by application from August 23, 2023?

Legal bases

• Law on Intellectual Property 2005, amended and supplemented in 2009, 2019, 2022;
• Decree No. 65/2023/ND-CP details a number of articles and measures to implement the Law on Intellectual Property on industrial property, protection of industrial property rights, rights to plant varieties and state management of intellectual property.

What is an international trademark under the Madrid system?

A Madrid application is an international application for registration of a trademark filed under the Madrid Agreement or under the Madrid Protocol. An international trademark by Madrid application is a trademark registered by a Madrid application with signs used to distinguish goods and services of the same or similar type of different production and business establishments.

Register an international trademark under the Madrid system of Vietnamese origin

Pursuant to Clause 2 Article 25 of Decree No. 65/2023/ND-CP, the Madrid Application is stipulated in the composition of the application as follows: “For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency of industrial property rights.”

Composition of an international trademark registration dossier under the Madrid system

In Clause 3, Article 25 of Decree 65/2023/ND-CP stipulates documents of Madrid applications of Vietnamese origin, including the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin according to Form No. 01 in Vietnamese in Appendix II of Decree No. 65/2023/ND-CP;
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (in case the application is submitted through a representative);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

How is the processing of Madrid Applications of Vietnamese origin and related requirements implemented in Decree 65/2023/ND-CP

Notes when submitting an international trademark application using the Madrid application

Firstly, on the right to submit

To meet the requirements for submitting rights under the Madrid system, an individual/organization must have a submitted application or trademark that has been protected at the Intellectual Property office of Vietnam.

To meet the requirement of submitting rights:

• Have business in a country which join the Madrid Agreement and the Madrid Protocol. Because Vietnam has acceded to the Madrid Agreement and the Madrid Protocol, Vietnamese enterprises can submit to countries that are members to both documents;
• Or reside in a participating country.

For example: If the client is a citizen or has business in Vietnam, the relationship here is understood with Vietnam (as a member of the Madrid system) and must submit internationally at the Intellectual Property office of Vietnam.

Secondly, about registration of premises

• If it is determined that the customer has the right to submit an application, the customer must either have submitted the application or have a trademark protected at the Intellectual Property office of Vietnam.
• There must be an premise trademark in order for you to submit for international trademark registration through the Intellectual Property office of Vietnam.

Third, about the declaration and content

Submit an international application under the Madrid system through the Intellectual Property office, which will verify the correspondence with your premise mark, confirm the international application and then submit it to WIPO. Therefore, it is necessary to note the declaration and the list of goods and services:

Declaration:

• To apply internationally must use the MM2 declaration form (available in English, French and Spanish).
• Send MM2 declaration to the Intellectual Property office of Vietnam, not directly to WIPO
• Note that all international applications designating the United States of America must include Declaration MM18 – Statement of Intent to Use the Trademark.

List of goods and services:

• Grouping goods and services according to the latest International Classification of goods and services (Nice Classification).
• Once an international application has been filed, it is not possible to add or expand the category of goods and services, or even to include the category where the goods and services are already mentioned in the underlying mark. If you wish to expand your category after submitting your MM2 declaration, a new international application will be required.

Track application progress

• To receive email notifications about the status of your application, simply provide the email address in section 2 of your international application form (MM2).
• By providing your email address, you will be automatically subscribed to the electronic notification service from WIPO. All notices regarding application status including deficiencies notices will be sent electronically to the email address provided. Paper dispatches will no longer be received from WIPO.

Process of Trademark Application Processing under the Madrid System

Pursuant to Article 26 of Decree No. 65/2023/ND-CP stipulating the processing of Madrid Applications as follows:

Step 1: File an international trademark application at the Intellectual Property office

Step 2: Receive Madrid Application of Vietnamese origin

The State management agency in charge of industrial property rights shall have to appraise to determine whether the application meets the prescribed requirements and carry out the following procedures:

• In case the application has deficiencies, the state management agency in charge of industrial property rights shall notify the applicant to correct the deficiencies. In case the applicant doesn’t correct the deficiency within 03 months from the date on which the state management agency in charge of industrial property rights issues a notification, the application shall be considered to be withdrawn.
• In case the application has no deficiencies or deficiencies but the applicant has corrected the satisfactorily, the State management agency in charge of industrial property rights shall issue a notice of fees and charges that the applicant needs to pay directly to the International Office, sign and certify the application and transmit it to the International Office within 15 days from the date of issuance fees and charges notices.
• The date on which the State management agency in charge of industrial property rights receives the Application of Madrid of Vietnamese origin shall be considered as the date of international registration of such application in case the International Office receives the application within 02 months from the date stated on the receipt stamp of the State management agency in charge of industrial property rights.
• In case the application is not completed to be sent to the International Office within the aforementioned time limit, the date of receipt of the application at the International Office shall be considered as the date of international registration.

The date of international filing is the date on which the Office of the Intellectual Property Office of the establishment receives the international application in case the Office of International Registration (WIPO) receives a valid application from the Office of the Intellectual Property Office of the country where the application is filed within 02 months from the date of filing at the Office of the Intellectual Property Office of the sending country base unit. If the application is not completed after 02 months, the international application date will be the date when the International Registration Office receives all valid documents.

Step 3: Notify the applicant after the application is submitted to the International Office

After the Madrid Application of Vietnamese origin is submitted to the International Office, the State Administration of Industrial Property Rights shall notify the applicant and continue to process (in coordination with the applicant if necessary) notices, requests from the International Office or other matters related to the application (if any).

Step 04: WIPO appraises the form of the international application and publishes it in the WIPO Official Gazette

• After receiving the valid application, the IB will check the formality of the application within 2-4 months.
• If the application meets the formal conditions, the international application will be published in the latest issue of the WIPO Gazette. The WIPO Gazette is usually published 4 times a month.

Step 03: Review content in selected and/or designated countries

• After your application is published in the WIPO Gazette, it will be assessed for protection in accordance with the regulations of the selected and/or designated country.
• Normally this period will be 12 months or 18 months for some countries from the date of receipt of the WIPO notification.

Note: In case the refusal of protection is made based on the objection of any other third party, the above time limit may be extended. The national office of the designated country must notify the IB of the deadline for objecting to the application in order to determine the deadline for issuing a final notice.

Register an international trademark by Madrid Application with Vietnam designation

Pursuant to Article 27 of Decree 65/2023/ND-CP, the processing of Madrid Applications with Vietnam designation is stipulated as follows:

• After receiving the notification of the International Office for the Madrid Application with Vietnamese designation, the State management agency in charge of industrial property rights shall appraise the contents of the application as for the trademark application filed in the national format.
• Within 12 months from the date of issuance of the notification by the International Office, the State management agency in charge of industrial property rights shall conclude on the protection of the trademark.

In case the trademark meets the requirements for protection as prescribed by Vietnamese law

For trademarks meeting the requirements for protection prescribed by Vietnamese law, state management agencies in charge of industrial property rights shall carry out the following procedures:

• Before the expiry of the 12-month period, the State management agency in charge of industrial property rights shall issue a decision accepting the protection of an internationally registered trademark in Vietnam, record it in the National Register of Industrial Property (Part of the International Registration Trademark) and send it to the International Office for declaration of protection;
• Announce the decision in the Official Gazette of Industrial Property within 02 months from the date of issuance of the decision.
• The scope (volume) of protection is determined according to the contents required in the international registration of trademarks recognized by the International Office and accepted by the State management agency in charge of industrial property rights.

In case a trademark contains goods and/or services that do not meet the conditions for protection or meet but international registration still has shortcomings

• For trademarks with a part or all of goods and/or services that do not meet the conditions for protection or meet the conditions for protection but have shortcomings in international registration (lack of regulations on the use of collective marks, certification marks, lack of photographs or drawings showing three-dimensional trademark perspective…), before the expiry of the 12-month period, the State management agency in charge of industrial property rights shall issue a temporary notice of refusal, clearly stating the contents and reasons for the refusal and sending such notice to the International Office.
• Within 03 months from the date on which the state management agency in charge of industrial property rights sends a notice of temporary refusal for part or all of goods and/or services, the applicant shall have the right to correct deficiencies or objections to the intention of the state management agency in charge of industrial property rights.
• Correction of omission or objection to intended refusal shall be carried out in accordance with the same procedures as for trademark applications filed in the national format, including regulations on how such applications are filed.

Above is the contents of international trademark registration by Madrid application that Viet An Law would like to inform. Industrial property representative – Viet An Law Firm is ready to provide services related to industrial property registration to support you, please contact us to get the best advice.