Validity of trademark registration under the Madrid Protocol and Agreement

In accordance with the current law of most countries in the world as well as the provisions of international treaties related to trademarks. The trademark is registered and protected according to the territorial principle (except for some exceptional cases such as Benelux trademark, EU trademark…). In fact, in commercial activities, trademark appropriation is becoming more and more popular and sophisticated in many countries around the world in general and in Vietnam in particular. Therefore, when goods are exported or intended to be exported or when they wish to perform their services in a foreign country, it is necessary for trademark owners to promptly register their trademark in that country. The trademark registration in foreign countries will help enterprises to penetrate, establish, maintain and develop export markets, fight against any violations, unfair competition or appropriation of competitors or profiteers. There are two popular ways to register a trademark abroad, which is the direct registration in each country and the international trademark registration under the Madrid system (Under the Madrid Protocol or under the Madrid Agreement).

What is the Madrid system?

The Madrid system is a system of trademark international registration which is managed by the International Office of the World Intellectual Property Organization (WIPO), created to facilitate the registration of trademarks 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/). This system is governed by two main legal documents: the Madrid Agreement and the Madrid Protocol. Vietnam has joined the Madrid Agreement and the Madrid Protocol, so Vietnamese enterprises can apply for countries that are members of both above documents.

New regulations on the validity of trademark registration under the Madrid Protocol and Agreement of the Intellectual Property Law, as amended and supplemented in 2022

According to the new regulations supplemented in Article 93.8 of the IP Law 2022, there are two bases to determine when a trademark registered under the Madrid system designating protection in Vietnam takes effect, specifically:

• From the date on which the National Office of Intellectual Property issued the decision to accept protection, and;
• From the day following of the expiry date of twelve months from the date on which the International Office issues the notice of international registration of that trademark designating Vietnam.

The meaning of the new regulation on the validity of trademark registration under the Madrid Protocol and Agreement of the Intellectual Property Law amended and supplemented in 2022

The supplement of provisions on the validity of trademark international registration under the Madrid Protocol and Agreement is important in determining the exact “grace period” during which the trademark owner has no obligation to use the trademark after registration, and a third party cannot terminate the trademark on the grounds of non-use. Thus, the regulation of the effective time of trademark international registration under the Madrid Protocol and Agreement has two meanings:

• Help the trademark owner know clearly the timeline must use the trademark to avoid being requested to terminate the validity by a third party with the reason of non-use.
• Help a third party determine the timeline to prove that a trademark registered under the Madrid system is not used to request termination.

Clients wishing to register a trademark in Vietnam, register a trademark abroad, or register a trademark under the Madrid system, please contact Viet An Law Firm for the most professional support and the most reasonable fee!