MADRID SYSTEM - GLOBAL TRADEMARK PROTECTION SOLUTION FOR VIETNAMESE ENTERPRISES
Nowadays, brand protection has become a key factor for sustainable business development. The increasingly deep global economic integration brings many opportunities to businesses along with many challenges. Specially, the competition for brands and products among businesses around the world is more fierce than ever. Therefore, having an effective brand protection system is extremely necessary.
The Madrid System, administered by the World Intellectual Property Organization (WIPO), is the ideal solution for Vietnamese businesses that want to register trademarks in multiple countries through a single application. Through this article, DHT will provide an overview of the Madrid System, the international trademark registration process, and the benefits that this system brings to Vietnamese businesses.
1. Overview of trademark protection and the Madrid system
1.1. Trademark protection
A trademark is a sign used to distinguish goods and services of different organizations and individuals (Clause 16, Article 4 of the 2005 Law on Intellectual Property, amended and supplemented in 2022).
Currently, there are many methods to classify trademarks depending on different bases:
Firstly, based on the form of expression of the sign used as a trademark, trademarks are divided into three types: word trademarks, image trademarks, and trademarks combining both words and images (Article 72 of the 2005 Law on Intellectual Property, amended and supplemented in 2022). Specifically:
Letter trademarks: are trademarks consisting of one or more letters, one or more sounds, one or more words, a phrase or sentence, or both numbers and letters.
Figurative trademarks: are trademarks expressed through lines, colors, drawings, photos, shapes, and symbols.
Compositive marks: are trademarks made up of lines, colors and letters.
Secondly, based on the function of the trademark, the trademark can be classified into collective trademark, certification trademark and associated trademark (Clause 17, 18, Article 4 of the 2005 Law on Intellectual Property, amended and supplemented in 2022).
Collective trademark: is a trademark used to distinguish the goods and services of members of an organization that owns the trademark from the goods and services of organizations and individuals that are not members of that organization.
Certification trademark: is a trademark that the trademark owner allows another organization or individual to use on the goods or services of that organization or individual to certify the characteristics of origin, raw materials, materials, method of production of goods, method of service provision, quality, accuracy, safety or other characteristics of the goods or services bearing the trademark.
Thirdly, based on the reputation and popularity of the trademark, the trademark is classified into ordinary trademark and famous trademark (Clause 20, Article 4 and Article 75 of the 2005 Law on Intellectual Property, amended and supplemented in 2022).
Common trademark: is a sign used to distinguish goods and services of organizations and individuals who are trademark owners.
Famous trademark: is a trademark that is widely known among the relevant public in a certain territory through the process of this trademark being continuously used in the market.
1.2. Madrid System
The Madrid System, administered by the World Intellectual Property Organization (WIPO), is an international system that allows businesses and individuals to register trademarks in multiple countries through a single application. The Madrid System is set up according to:
(1) The Madrid Agreement (Concerning the International Registration of Marks, abbreviated as the Madrid Agreement), was signed in Madrid on April 14, 1891, and currently has 55 members in the system; and
(2) The Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) was signed on June 27, 1989 in Madrid. It currently has 113 members, including the participation of countries and regions such as OAIP and EU on the system.
Vietnam joined the Madrid Agreement on March 8, 1949 and the Madrid Protocol on July 11, 2006, creating favorable conditions for domestic enterprises in protecting their brands in the international market.
2. Registering trademark protection on the Madrid system
2.1. Conditions for trademark registration under the Madrid system
2.1.1. Types of trademarks that can be registered under the Madrid system
Pursuant to Article 9 of the General Provisions under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (in force from 1 February 2019), the Madrid system allows for the registration of a wide range of marks, including:
- Word mark: Name, letters, numbers or combination of letters and numbers.
- Visual trademark: Symbol, logo, or distinctive image.
- Sound branding: A distinctive sound that can identify a brand (signature).
- Three-dimensional trademark: The characteristic shape or structure of the product.
- Service mark: A mark that distinguishes services.
2.1.2. Conditions for trademark registration under the Madrid system
2.1.2.1. Conditions on registration subjects
According to Article 1 of the Madrid Agreement, the subjects entitled to file an international registration application include individuals who are citizens or residents of the territory of a contracting party or legal entities having a real business establishment in the territory of a contracting party entitled to file an international registration application for a trademark under the Madrid system.
2.1.2.2. Conditions for trademark registration
According to Clause 2, Article 1 of the Madrid Agreement, a trademark registered on the Madrid system must be a trademark previously registered in the home country (or country of origin). Applying Article 72 of the 2005 Law on Intellectual Property (amended and supplemented in 2022), a trademark of a Vietnamese enterprise when registering for protection must meet the following criteria:
- Is a visible sign in the form of letters, words, drawings, images, three-dimensional figures or a combination of these elements, represented by one or more colors or an audio sign represented in graphic form.
- Distinctiveness: A trademark must be capable of distinguishing the products or services of one enterprise from those of another enterprise (the ability to distinguish products or services is stipulated in Article 74).
- No violation of legal regulations: The trademark must not violate regulations on ethics, social order and must not cause confusion with previously registered trademarks.
The Madrid Protocol also emphasizes that trademarks must not only meet the criteria of the Agreement but also comply with the regulations of the member countries where the trademark is protected.
2.2. Trademark registration process on the Madrid system
To register a trademark through the Madrid system, Vietnamese enterprises need to follow the following process:
2.2.1. Documents to prepare
Article 25 of Decree of the Government No. 65/2023/ND-CP stipulates as follows: An international trademark application under the Madrid System must be based on a basic application that has been filed with the National Office of Intellectual Property or has been granted a Certificate of Trademark Registration by the National Office of Intellectual Property:
a) Application form for international registration of a trademark originating from Vietnam according to Form No. 01 in Vietnamese in Appendix II of this Decree;
b) 02 MM2 declarations according to the International Office's form in English or French;
c) 02 trademark samples identical to the trademark in the application filed in Vietnam (basic application) or the trademark registration certificate (basic registration);
d) 02 MM18 forms in English (if the application designates the United States);
d) Authorization document in Vietnamese (in case the application is submitted through a representative);
e) Documents for payment of fees for international registration procedures for trademarks originating from Vietnam;
g) Other relevant documents (if necessary).
Madrid applications of Vietnamese origin must meet the requirements on form and content as prescribed. The applicant must fill in the information in the application form completely, accurately and in accordance with the regulations, consistent with the information stated in the basic application or basic registration.
2.2.2. Implementing agency
- The World Intellectual Property Organization (WIPO) is the main agency.
- The National Office of Intellectual Property of Vietnam is the basic agency where businesses submit applications before WIPO intervenes.
2.2.3. Implementation sequence
Step 1: File a basic application in Vietnam (if the trademark has not been filed or granted a protection certificate in Vietnam). The procedures for registering a trademark in Vietnam are posted on the website https://www.ipvietnam.gov.vn/nhan-hieu
Step 2: Submit an International Registration application to WIPO through the National Office of Intellectual Property of Vietnam.
Applicants can submit international trademark registration applications directly or via postal service to one of the application receiving points of the Intellectual Property Office, specifically:
+ Head office of the Intellectual Property Office, address: 386 Nguyen Trai, Thanh Xuan district, Hanoi city.
+ Representative office of the Department of Intellectual Property in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.
+ Representative office of the Department of Intellectual Property in Da Nang city, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang city.
Step 3: The local authority checks and sends the application to WIPO.
Clause 1, Article 26 of Decree of the Government No. 65/2023/ND-CP stipulates as follows: After receiving a Madrid Application originating from Vietnam, the state management agency of industrial property rights is responsible for examining to determine whether the application meets the requirements prescribed in Clauses 3 and 4, Article 25 of this Decree and carrying out the following procedures:
a) In case the application contains errors, the state management agency of industrial property rights shall notify the applicant to correct the errors. In case the applicant fails to correct the errors within 03 months from the date of notification by the state management agency of industrial property rights, the application shall be considered withdrawn;
b) In case the application has no errors or has errors but the applicant has corrected the errors to the required standards, the state management agency of industrial property rights shall issue a notice of fees and charges that the applicant must pay directly to the International Bureau, sign to confirm the application and transfer the application to the International Bureau within 15 days from the date of issuance of the notice of fees and charges;
The date on which the State administrative authority for industrial property rights receives a Madrid Application originating in Vietnam shall be considered the date of international registration of that application in case the International Bureau receives the application within 02 months from the date on the receipt stamp of the State administrative authority for industrial property rights. In case the application is not completed for sending to the International Bureau within the above time limit, the date on which the application is received at the International Bureau shall be considered the date of international registration.
- Step 4: WIPO reviews and publishes the trademark.
After the examination process, the application will be examined in terms of form, including: the applicant's qualifications, the trademark sample, the application form, the list of goods and services. In case it fully meets the requirements, the international application will be recorded in the International Register and published in the WIPO International Trademark Gazette.
- Step 5: National/regional agency reviews content
Once WIPO has entered the mark in the International Register, it will notify all the Offices of the member states designated by the applicant in the international application (also known as designated Contracting Party Offices) so that these Offices can begin substantive examination.
The Office of each designated Contracting Party will conduct a substantive examination of the mark in the company's international registration in the same manner as it examines national/regional applications and in accordance with its domestic law. A decision on the scope of protection will be made within 12 months (or 18 months, for certain member states) from the date of WIPO's notification to the designated Office.
The final result is that the Office must issue a notice of acceptance of trademark protection (equivalent to a domestic trademark registration certificate issued by the national/regional IP Office) or a notice of refusal of trademark protection (in whole or in part).
3. Advantages for Vietnamese businesses when registering trademark protection through the Madrid system
International trademark registration through the Madrid System brings many advantages to Vietnamese businesses and organizations compared to conventional trademark registration:
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
The Madrid System is an effective tool for businesses in protecting their trademarks in the international market. Understanding the registration process and conditions not only helps Vietnamese businesses exercise their intellectual property rights in the best way but also opens up opportunities for brand development globally. Therefore, participating in the Madrid System is not only a necessary step but also a smart strategy in the current context of globalization.
Above is all the information related to trademark registration on the Madrid system. Dai Ha Thanh Law Company Limited with a team of Lawyers and Legal Advisors professionally trained at home and abroad is committed to providing professional legal services to our customers. If you need detailed advice, please contact us to receive professional and effective legal advice.
