Trademark registration through the Madrid System

According to law, trademarks are registered and protected according to territorial principles (exclude some exceptions such as Benelux trademarks, and European Community trademarks…). Presently, copying actual trademarks is becoming more common and more sophisticated in many countries around the world in general and in Vietnam in particular. As a result, when goods are exported or intended to be exported or when they want to carry out their services in a foreign country, the trademark owner needs to promptly register the trademark in that country. There are two common ways to register a trademark abroad: direct registration in each country and trademark registration through the Madrid System.

What is the Madrid System?

The Madrid System is an international trademark registration system managed by the International Office of the World Intellectual Property Organization (WIPO), founded to facilitate trademark registration at the same time in many countries around the world (Applicants can search for information related to the System at https://www.wipo.int/madrid/en/). In 2024, the Madrid System has 114 members, including 130 countries and territories. The newest member is Mauritius.

Benefits of trademark registration through the Madrid System

• The applicant can apply in one place and obtain protection in different places.
• Apply in one language; pay a one-time fee (with exceptions), in one currency;
• Post-registration management (modification, transfer of rights, cancellation, etc.) is easier and saves costs, time, and simplifies procedures for applicants.

That’s why trademark registration through the Madrid system is increasingly chosen by individuals and businesses to register their trademarks abroad.

The legal document regulating trademark registration procedures through the Madrid system is of Vietnamese origin

• Madrid Agreement;
• Madrid Protocol;
• Regulations for implementing the Madrid Protocol;
• Intellectual Property Law 2005, as amended and supplemented in 2022;
• Decree 65/2023/ND-CP dated August 23, 2023.
• Circulars and other legal documents.

Conditions for filing a trademark registration through the Madrid system

• The Madrid application must be based on a basic application or basic registration (mandatory condition).
• 2-month period to get the filing date in the country/party of origin;
• The dependency period is 5 years.

Documents required in a trademark registration through the Madrid system:

• Power of attorney (if submitted through a representative organization);
• 01 Vietnamese declaration (form to establish the right to use declaration form Appendix II – Form No. 01; other requests (later appointment, extension…) use declaration 08/SĐQT;
• 02 English declarations (MM2, MM4 to MM24, depending on purpose) (Can be downloaded from the WIPO website or contact Viet An Law for specific support);
• 02 MM18 declaration forms (if the application specifies the US);
• 02 trademark samples;
• Document of application processing fee from the National Office of Intellectual Property of Vietnam
• Declaration of trademark use (Depending on country’s designation and requirements);
• Other documents (if any).

Fee for trademark registration via the Madrid system

Fees paid to the National Office of Intellectual Property of Vietnam

• Fee for carrying out procedures for international trademark registration of Vietnamese origin (excluding fees payable to WIPO): 2,000,000 VND (application for registering rights).
• Fee for amending a trademark application through the Madrid system: 1,000,000 VND (for other requests such as amendments, extensions, etc.);

International trademark registration fees to the Madrid system paid to WIPO

After notification from the National Office of Intellectual Property of Vietnam and WIPO international office, the applicant needs to pay the following fees:

• Basic fee;
• Charges;
• Additional fees;
• Individual fees.

Trademark registration service fees to the Madrid system

When filing an application through a representative, the client pays the Intellectual Property Representative Organization a service fee through the representative service contract and the fee of each independent company.

Methods to submit trademark applications through the Madrid system

• Submit directly to the Registration Office at the Head Office in Hanoi or the Representative Office of the National Office of Intellectual Property in Ho Chi Minh City and Da Nang;
• Submit online via the Internet;
• Submit by post.

Trademark registration application procedure via the Madrid system

Step 1: Submit a trademark registration application under the Madrid system at the National Office of Intellectual Property of Vietnam

• The applicant files an application for trademark registration under the Madrid system at the National Office of Intellectual Property. At the same time, pay the registration fee.
• The National Office of Intellectual Property receives trademark registration applications.

Step 2: The National Office of Intellectual Property processes the trademark application according to the Madrid system and notifies fees

If the trademark application under the Madrid system has no shortcomings

• The National Office of Intellectual Property notifies fee for applicants to pay fees to WIPO;
• The National Office of Intellectual Property simultaneously transferred the application to WIPO;
• The applicant returns the documents to the National Office of Intellectual Property to complete the dossier (correct if necessary).
• After submitting the application, the National Office of Intellectual Property issues a notice to let the applicant know and monitor the application.

If the trademark application under the Madrid system is flawed

• The National Office of Intellectual Property issues an official dispatch requesting the applicant to correct errors; Once the application is complete, the National Office of Intellectual Property issues a fee notice and repeats the above process;
• In case the applicant does not correct the errors within 3 months, the application will be considered withdrawn.
• After submitting the application to WIPO, if there is a notice from WIPO, the National Office of Intellectual Property will coordinate with the applicant and WIPO to process according to the regulations of the Madrid System.

Step 3: WIPO transfers the trademark application to designated members

After WIPO completes the formality checks, it will forward the application to the designated members.

Step 4: Members designate the trademark application to examine the application

Members designate trademark registration applications conduct substantive examination of the application according to regulations.

Step 5: The members designated the application finish examining the application and notify the results to WIPO

• Notify results to WIPO;
• WIPO will record the results in the International Register and publish them in the WIPO Official Gazette and send them to the applicant via email.
• In case the trademark is refused, the applicant can have an opinion (as deemed).

Rejected trademark application under the Madrid system

International trademark registration applications under the Madrid system can be rejected for various reasons, both in terms of the form of the application and the nature of the trademark that does not meet protection standards. Members that are assigned trademark applications under the Madrid system often set a deadline for the application owner to make corrections and provide responses, usually from 1-6 months depending on the country. However, some common characteristics can be seen as follows:

• Normally, countries require a rejection or opinion to be made through a representative/lawyer with a registered address in the country of origin;
• The refusal must not be made within the specified time;
• Rejection may not be accepted the first time.
• Rejection may result in many additional costs;
• Procedures for paying fees abroad require many documents and complicated processes.
• The basis for the refusal is not valid, legal, and unconvincing.

Therefore, when trademark registration under the Madrid system is rejected, to save costs and get accurate advice, the owner of the trademark application should find a reputable service unit for timely advice, to ensure the progress and interests of the applicant.

Monitor trademark applications according to the Madrid system

• To monitor application status, you can access the Madrid Monitor tool at: https://www.wipo.int/madrid/monitor/en/index.jsp
• Notifications from WIPO and the National Office of Intellectual Property via email when the applicant declares in the application declaration.

Trademark registration service of Viet An Law

• Preliminary consultation before carrying out necessary procedures on behalf of the client at the competent State agency related to trademark registration procedures under the Madrid system;
• Trademark research and notify clients of the search results;
• Draft documents and directly submit and monitor the status of trademark registration applications according to the Madrid system on behalf of clients;
• Notify, advise, and handle shortcomings/rejections from competent State agencies (if any) during the application tracking process;
• Receive official dispatches and certificates and hand them over to clients (if any).

For all information related to trademark registration through the Madrid System, please contact Viet An Law for more specific and detailed instructions.