Trademark registration under the Madrid Protocol

The Madrid Protocol is an evolution of the international filing system under the Madrid Agreement to attract more members. It can be seen that trademark registration under the Madrid Protocol is a form of international trademark registration applicable to countries that are members of the Madrid Protocol. So how is a trademark registered under the Madrid Protocol? The article below from Viet An Law will answer your questions.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented 2009, 2019, 2022;
• Madrid Protocol 1989;
• Decree 65/2023/ND-CP detailing a number of articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties and variety management.

What is trademark registration?

Registering trademarks for products and goods is a procedure that individuals and organizations need to carry out to establish trademark rights of products and goods. The form of recognition of rights to a trademark is a Trademark Registration Certificate.

Conditions for filing trademark registration applications according to the Madrid Protocol

Subjects wishing to register an international trademark must satisfy the following conditions:

• Individuals with nationality in a country that is a member of the Madrid Protocol or an organization with a legal business establishment in a country that is a member of the Madrid Protocol have the right to apply for international trademark registration under the Madrid Protocol.
• The international registration application under the Madrid Protocol needs to be based on a basic application that has been submitted to the National Office of Intellectual Property or has been granted a Trademark Registration Certificate by the National Office of Intellectual Property.

List of countries that are members of the Madrid Protocol

Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, European Community , Finland, France, Georgia, Greece, Germany, Hungary, Iran, Iceland, Ireland, Italy, Japan, Kenya, Kyrgyzstan, Latvia, Lesotho, Lithuania, Liechtenstein, Luxembourg, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, Norway, Oman, Poland, Portugal, Korea, Romania, Russia, Serbia, Singapore, Sierra Leone, Slovakia, Slovenia, Spain, Swaziland, Turkey United States, Turkmenistan, Switzerland, Sweden, Syrian Arab republic, Yugoslav Republic of Macedonia, Ukraine, Vietnam, United Kingdom, United States, Zambia.

Procedures for trademark registration under the Madrid Protocol

To register, applicants need to follow these steps:

Step 1: Research the possibility of trademark protection

This is an important stage when registering for trademark protection because when applicants want to register, they need to research the protection ability of the trademark to be registered in advance to avoid risks when applying for international registration rejected due to confusion with previous applications or falling under other cases of refusal to grant applications according to regulations.

Step 2: Prepare documents and submit an application for protection registration

After completing the search for trademark protection, and ensuring that the trademark is not similar or likelihood of confusion with trademarks that are protected in other countries, the applicant can submit an application for registration. International trademark protection under the Madrid Protocol at the International Office of the World Intellectual Property Organization (WIPO) through the National Office of Intellectual Property.

Step 3: Formality examination and publication of the application

After submitting an application for protection registration at the National Office of Intellectual Property, within 30 days from the date of receipt of the request, the National Office of Intellectual Property will send the trademark protection application to the International Bureau of WIPO. Here, the registration application will be examined formality, including applicant status, trademark sample, application form, and list of goods and services. In case the international registration application requirements are fully met, it will be recorded in the international register and published in WIPO’s international trademark gazette.

Step 4: WIPO examines the formality and transmits the protection request to the trademark registration agencies of the designated countries.

The International Bureau notifies each participating party that receives a request for protection in an international application or designation (designation countries such as the US, Japan, EU). From the date of international registration or subsequent designation, trademark protection in each designated participant will be the same as if the mark were filed directly with the office of that participant. Each participating party is assigned to examine the substance of the application within the time prescribed by the Madrid Protocol and then notify the results of the examination to the International Bureau.

Step 5: Issue a protection registration application or notify of refusal to grant a protection title

Between 16-18 months:

• If the trademark office of the designating country does not issue a refusal notice, the trademark will automatically be protected in that country.
• If the trademark office of the designating country has a reason not to accept trademark protection, it will send a Notice of temporary refusal to register that trademark to the trademark owner. The trademark owner will respond/appeal to the Notice of Rejection by the regulations of that member country.

The examination of applications under the Madrid system is carried out independently in each designated country. The refusal of protection in one country does not affect the validity of trademark protection or the process of considering protection in the remaining countries.

Trademark registration documents according to the Madrid Protocol

Components of an international trademark registration dossier filing through the Vietnam National Office of Intellectual Property including:

• Declaration requesting international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declaration forms according to the International Bureau’s form in English or French;
• 02 trademark samples identical to the trademark in the registration application filed in Vietnam (basic application) or trademark registration certificate (basic registration);
• 02 MM18 declaration forms in English (if the application specifies the United States);
• Power of Attorney to carry out procedures for individuals or Authorization letter to carry out procedures for organizations (if the application is submitted through a representative);
• Proof of payment of fees for carrying out international registration procedures for trademarks of Vietnamese origin;
• Other relevant documents (if any).

Proof of payment of fees must be submitted with the application:

• Preliminary appraisal fee paid to the National Office of Intellectual Property;
• Fees paid to the International Bureau of the World Intellectual Property Organization (WIPO).

Number of documents: 01 set.

Form of filing a trademark registration application under the Madrid Protocol

Applicants can apply for trademark registration under the Madrid Protocol directly or via postal service to one of the Vietnam National Office of Intellectual Property’s application receiving locations, specifically:

• Head office of the Department of Intellectual Property (386 Nguyen Trai, Thanh Xuan district, Hanoi city).
• Representative office of the National Office of Intellectual Property in Ho Chi Minh City (7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City).
• Representative office of the National Office of Intellectual Property in Da Nang City (3rd floor, 135 Minh Mang, My Khue ward, Ngu Hanh Son district, Da Nang City).

In case of applying by the post office, the applicant needs to transfer money through the post office service, then photocopy the money transfer receipt and send it along with the application file to one of the locations receiving the application (mentioned above) to prove the amount paid.

Note

• The time limit for appraisal of international trademark registration applications is 18 – 24 months.
• Protection term: 10 years (can be extended multiple times for 10 years each time).
• Application language: English or French.
• Subjects carrying out administrative procedures: individuals, and organizations.
• Agency carrying out administrative procedures in Vietnam: National Office of Intellectual Property.
• Result of administrative procedures: Trademark registration certificate in each designated country.

Clients who need advice on trademark registration under the Madrid Protocol, please contact Viet An Law Firm for the best support.