In the current context of increasingly integrated economic integration, the issue of trademark protection is not only concerned and implemented on a national scale but also has an international nature, especially for related businesses to import and export activities. Registering a trademark abroad will help businesses penetrate, create, and stably develop markets in export markets. Registering trademark protection abroad is carried out through two common forms: direct registration in each country or international trademark registration according to the Madrid system. In the following article, Viet An Law will answer questions related to trademark registration under the Madrid Agreement in Vietnam.
Section 4 (Application and processing of Madrid applications) of Decree 65/2023/ND-CP officially takes effect from August 23, 2023, detailing the contents related to applications and processing of trademark registration applications according to the Madrid agreement. These new regulations have been inherited from the regulations on Madrid Applications of Decree 103/2006/ND-CP (Article 12) and procedures for handling Madrid Applications at Point 41 of Circular 01/2007/TT-BKHCN with technical adjustments to comply with Madrid’s new regulations and examination practices.
Regulations on Madrid application
The international registration system (Madrid system) is an international system for trademark registration in many countries around the world. The legal basis of this system is the Madrid Agreement on the international registration of trademarks in effect since 1891 and the Protocol related to the Madrid Agreement since 1996.
The Madrid Agreement is the legal basis of the Madrid international registration system – origins on two legal origins including the Madrid Agreement and the related Protocol to the Madrid Agreement.
All trademarks granted a Trademark Registration Certificate in Vietnam have the right to register an international trademark under the Madrid Agreement.
Madrid Application includes Madrid Application with Vietnamese origin and Madrid Application with Vietnamese designation.
For Madrid Applications with Vietnamese origin, the applicant must submit them through the state management agency on industrial property rights, i.e. the Vietnam National Office of Intellectual Property. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application with Vietnamese origin includes the following documents:
Step 1: Research the trademark
This is not a mandatory stage. However, businesses that want to register an international trademark in this form should conduct a search in advance for the possibility of trademark registration to avoid the risk of the international trademark registration application being rejected due to similar reasons confusing with registration applications or protected trademarks in each country. Businesses can use free national and international data origins (e.g. WIPO Madrid Monitor, designated country data origin).
After meeting the above conditions and ensuring that your trademark is not confusingly similar to the registration application or protected trademark in each country, the enterprise can apply for international trademark registration under the Madrid system at the International Bureau of the World Intellectual Property Organization (WIPO) through the National Office of Intellectual Property.
Step 2: Prepare application documents after obtaining feasible trademark search results
Time is 3-5 working days from receipt of sufficient information and documents provided by the client.
Step 3: Submit an international trademark application
After receiving the Madrid Application with Vietnamese origin, the state management agency on industrial property rights is responsible for examining the form of the application dossier as requested. The applicant has the right to correct errors according to the notice within 3 months from the date of notification.
In case the application is valid, the National Office of Intellectual Property issues a notice of payment of fees that the applicant must pay directly to the International Bureau, sign the application, and transfer the application to the International Bureau within 15 days. days from the date of notice of fees.
In case the application has errors, the state management agency in charge of industrial property rights shall notify the applicant to correct the errors. In case the applicant does not correct the errors within 03 months from the date the state management agency in charge of industrial property rights issues the notice, the application will be considered withdrawn;
In case the application has no errors or has errors but the applicant has corrected the errors satisfactorily, the state management agency for industrial property rights will issue a notice of fees that the applicant needs to pay. Submit directly to the International Office, sign and confirm the application, and transfer the application to the International Bureau within 15 days from the date of notification;
Step 4: Monitor the progress of the trademark application
The National Office of Intellectual Property will be the intermediary agency that coordinates with the applicant if necessary to process the international trademark application.
Step 5: Receive the results of trademark registration
WIPO will be the intermediary to transfer official dispatches and issued trademark registration certificates (if any) from the trademark registration agency in the designated country to the trademark registration agency in the origin country and the applicant in the origin country.
Requirements to be implemented after a Madrid Application with Vietnamese origin is granted an international registration number such as the following designation (expanding the protected territory), modifying the name and address of the international registered owner, and limitations List of goods and services, an extension of international registration validity, the appointment of the representative, change of representative, recording of transfer of international registration, etc. can be done directly with the International Bureau or through the state management agency on industrial property rights. In case of filing through the state management agency on industrial property rights, the applicant needs to submit the following documents:
After receiving the above documents, the National Office of Intellectual Property will process and amend the Madrid Application with Vietnamese origin and be granted an international registration number as follows.
In case of a request to extend an international registration submitted through the National Office of Intellectual Property, the applicant needs to submit it no earlier than 06 months and no later than 01 month from the date of expiration of that international registration. If a request is made to extend the validity of the international registration during the extended period, the request dossier must be submitted to the state management agency on industrial property rights no later than 01 month from the date of expiration of the grace period.
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Registering a trademark in each independent country will cost a lot of money, especially procedure fees. Registering a trademark under the Madrid Agreement allows trademarks to be protected in member states. From there, businesses can export their goods and services abroad. This is the top choice of small and medium-sized enterprises aiming to expand their business scope.
In addition, the trademark owner only has to submit a single application, in a single language, French, and only has to pay fees to one agency, instead of having to make multiple applications, each in a different language and fee. more expensive fees.
The Madrid Agreement allows organizations/individuals to register for exclusive protection in many countries with just one single procedure but with long-term effectiveness.
The term of exclusive protection under the Madrid Agreement is up to 10 years and can be extended.
Clients who need advice on trademark protection registration services under the Madrid Agreement, please contact Viet An Law Firm for the best support.
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