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LEGAL TUTORIALS FOR DOING BUSINESS IN VIETNAM

International Registration of Marks under the Madrid Agreement and the Madrid Protocol


Via one single application for trademark protection under the Madrid System, clients can expect to receive protection in a large number of countries.

The Madrid Agreement and the Madrid Protocol

The Madrid System for the International Registration of Marks includes the Madrid Agreement and any Protocol relating to that Agreement. The two treaties enable trademark holders to protect their trademarks in many countries around the world.

The cost of filing an international trademark registration with the Madrid System is much lower than directly filing an application with each country’s trademark office.

Differences between the Madrid Agreement and the Protocol Relating to the Madrid Agreement:

Criteria

Madrid Agreement

Madrid Protocol

Requirements on International registration

Already had a Trademark Registration Certificate in the country of origin.

Already filed an application for trademark registration or had a Trademark Registration Certificate in the country of origin

Filing language

French

English, French, and Spanish

Validity

20 years and renewable

10 years and renewable

When suspended at the request of the country of origin

No regulations.

If the suspension requested by the country of origin is commenced within 3 months from the date of filing in the country of origin, the International Registration application designated in other countries shall remain in effect and the date of designation unchanged nonetheless.

Number of Contracting Parties

55 countries

98 countries

List of Members of the Madrid system
 

Trademark registration under the Madrid Agreement

Conditions on registration eligibility:

  • The trademark must be granted a protection title by the country of origin in which the entity registered his/her production and/or business.
  • Full payment of fees and charges for protection application is required.
  • The trademark registered for protection must comply with the provisions of the law in the country where protection is sought.

For example: A Chinese company seeking to apply for trademark protection in Vietnam must satisfy the following conditions:

  • The trademark applying for registration must be a visible sign in the form of letters, words, drawings or images, or a combination thereof.
  • The trademark must be able to distinguish goods and/or services of the mark holder from other goods and/or services of the same category.

Duration of application: from 14 to 16 months. However, in reality it may take even longer if the application is not carefully prepared.

Validity is 20 years and renewable.

During the first 5 years from the date of the international registration, the international registration of a trademark remains dependent on its registration in the country of origin. If the trademark registration in the country of origin is invalid (i.e. expired, revoked, or renounced), the international registration will also be suspended.

For example: A company was granted a trademark protection title in Vietnam on 10th October 2000.

On 15th December 2008, the company successfully registered the trademark for protection in Germany under the Madrid Agreement.

However, on 10th October 2010, the trademark registration in Vietnam expired without being renewed by the company.

Therefore, the trademark protection registered in Germany, as might be expected, was deemed invalid since it was still within the 5-year period after 15th December 2008.
 

After said period of 5 years, the international trademark registration will be independent of the trademark registration in the country of origin.

For example: In such case, if the trademark registration in Germany had been done earlier (within the period from 10th October 2000 to 9th October 2005), the protection title in Germany would have remained valid regardless of the expired title in Vietnam.

Article 3, 4, 5, 6, and 7 of the 1891 Madrid Agreement

 

Trademark registration under the Madrid Protocol

Conditions on registration eligibility:

  • The Madrid Protocol allows registrations based on new and direct registrations or already-obtained trademark protection titles in countries of origin that are parties to the Protocol.
  • Full payment of fees and charges for protection application is required.
  • The mark registered for protection must comply with the provisions of the law in the country where protection is sought.

Duration of application: from 19 to 20 months.

Validity:

Registration of a mark at the International Bureau is effective for 10 years, with the possibility of renewal of another 10 years upon its expiration.

Article 2, 3, 4, 5, 6, and 7 of the Protocol Relating to the Madrid Agreement
 

International trademark registration in Vietnam

Vietnam is currently a member of both the Madrid Agreement and the Madrid Protocol. Therefore, organizations and individuals can choose either of the two treaties to apply for international trademark registration in Vietnam.

Conditions on international registration in Vietnam:

  • Subjects who have been granted a Certificate of Trademark Registration in Vietnam shall have the right to apply for international registration of the respective trademark(s) under the Madrid Agreement or the Madrid Protocol.
  • Subjects who have filed an application may apply for international registration under the Madrid Protocol without having to wait for a Certificate of Trademark Registration in Vietnam.

The registration order is the same as that of a normal trademark.

However, applicants are expected to submit an application following the international form to the National Office of Intellectual Property of Vietnam. Fees and charges are based on the number of designated countries; colored trademarks are subject to higher fees than black and white trademarks.

Procedures will be implemented through the International Bureau.

All applications filed through the Madrid System are assessed independently. The fact that a mark is rejected for protection in the country of origin does not affect its registrability in designated countries and vice versa.

Registration application:

  • Written declaration requesting the international registration of a mark.
  • Sample of the trademark to be registered.
  • Receipts of fees and charges.
  • Copy of the Certificate of Trademark Registration in Vietnam.
  • Power of attorney to carry out registration procedures.

Article 41.2, 41.3, and 41.5 of Circular 01/2007/TT-BKHCN
 

Extension of validity of international registration of marks originating in Vietnam

Within 6 months before the validity of the international registration expires, applicants must pay the fees to extend the validity of international registration according to the notices of the International Bureau.

After the payment of the renewal fees, the international registration will be automatically extended.

Article 41.7 of Circular 01/2007/TT-BKHCN
 

Organizations and individuals seeking PLF’s advice on international registration of marks, please contact:

Procedures for setting up a wholly foreign-owned enterprise in VietnamPLF LAW FIRM

12th Floor, Ruby Tower,

81-85 Ham Nghi, District 1, Ho Chi Minh City, Vietnam

Tel: +8428 3821 2161 or +8428 3821 2162

Fax: +8428 3821 2165

Email: legal@plf.vn

Website: http://www.plf.vn

Working hours:

8h00 - 17h30 (UTC+7)

Mondays - Fridays

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