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.
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.
Subjects wishing to register an international trademark must satisfy the following conditions:
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.
To register, applicants need to follow these steps:
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.
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.
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.
Between 16-18 months:
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.
Components of an international trademark registration dossier filing through the Vietnam National Office of Intellectual Property including:
Proof of payment of fees must be submitted with the application:
Number of documents: 01 set.
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:
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.
Clients who need advice on trademark registration under the Madrid Protocol, please contact Viet An Law Firm for the best support.
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