1. What is an international trademark under the Madrid system?

An international trademark under the Madrid System represents a significant milestone in the realm of intellectual property protection, offering a streamlined and efficient approach for businesses seeking to safeguard their brands on a global scale. Established by the Madrid Agreement and the Madrid Protocol, this international framework simplifies the process of registering and managing trademarks across multiple countries, fostering a more accessible and harmonized system.

At its core, the Madrid System provides a centralized mechanism through which a trademark owner can secure protection in multiple member countries by filing a single application with the World Intellectual Property Organization (WIPO). This approach eliminates the need to navigate individual application processes in each desired jurisdiction, substantially reducing administrative burdens and associated costs.

One of the hallmark features of the Madrid System is the ability to designate multiple member countries in a single application. This not only expedites the registration process but also ensures a consistent and cohesive brand presence across diverse markets. Moreover, the system facilitates the subsequent management of the trademark portfolio, allowing for modifications, renewals, and additional designations through a centralized system.

To initiate the international trademark registration process under the Madrid System, the applicant must first have a national or regional trademark registration in their home country, commonly referred to as the "basic application" or "basic registration." This serves as the foundation for the subsequent international filing. Once the basic application or registration is in place, the trademark owner can submit an international application to WIPO, designating the desired member countries for protection.

One of the notable advantages of the Madrid System is its cost-effectiveness. Rather than engaging with multiple national or regional offices, the applicant deals with a single international bureau, simplifying fee structures and minimizing the financial outlay associated with the protection of trademarks across borders. Additionally, the centralized nature of the system enhances efficiency, allowing for quicker processing times compared to individual filings.

However, it's crucial to note that the Madrid System operates on a dependency principle. The international registration is dependent on the continued existence of the basic application or registration for a specified period. If the basic application is refused or canceled within this period, the international registration may be similarly affected in the designated countries.

In conclusion, an international trademark under the Madrid System represents a strategic and efficient approach for businesses seeking global brand protection. By providing a unified and simplified process, this system empowers trademark owners to navigate the complexities of international intellectual property rights with greater ease, promoting the expansion of their brands across borders.

2. Guidelines for international trademark registration under the Madrid system of Vietnamese origin

In accordance with the regulations outlined in Clause 2, Article 25 of Decree No. 65/2023/ND-CP, the Madrid Application's composition is intricately defined, specifically concerning applications of Vietnamese origin. As delineated, the applicant is obligated to engage with the state management agency responsible for industrial property rights in the submission process.

Expanding on the meticulous composition of a dossier for international trademark registration under the Madrid System, detailed guidelines are provided in Clause 3, Article 25 of the aforementioned decree. The requisite documents for Madrid applications originating from Vietnam encompass a comprehensive set of elements, as enumerated below:

Declaration of request for international registration of a trademark of Vietnamese origin: This document must adhere to the specifications outlined in Form No. 01, presented in Vietnamese, as indicated in Appendix II of Decree No. 65/2023/ND-CP.
02 MM2 declarations: These declarations, aligned with the format prescribed by the International Office, are to be submitted in either English or French, further emphasizing the international nature of the Madrid System.
02 trademark samples: Exact replicas of the trademark as depicted in the original application filed in Vietnam (establishment application) or the accompanying trademark registration certificate (establishment registration) must be included in the dossier.
02 MM18 declarations in English: If the application incorporates a designation for the United States, it necessitates the submission of 02 MM18 declarations in the English language, underscoring the importance of linguistic precision.
Written authorization in Vietnamese: In instances where the application is presented through a representative, a written authorization in Vietnamese becomes imperative, reinforcing the legal framework surrounding representative submissions.
Documents evidencing payment of fees: Transparency in financial transactions is upheld through the inclusion of documents validating the payment of fees associated with the international registration of trademarks of Vietnamese origin.
Other relevant documents: Recognizing the dynamic nature of legal processes, the decree accommodates flexibility by inviting the submission of any additional documents deemed necessary, ensuring a comprehensive and adaptable approach to the international registration process.

In essence, the detailed specifications outlined in Decree No. 65/2023/ND-CP serve as a roadmap for prospective applicants, delineating the intricacies of assembling a dossier for international trademark registration under the Madrid System, with a specific focus on applications originating from Vietnam.

3. Important points to consider when submitting an international trademark application through the Madrid application

Firstly, with regard to the right to submit under the Madrid system, fulfilling the submission requirements necessitates either having an application already submitted or possessing a trademark that has received protection from the Intellectual Property office of Vietnam. This prerequisite establishes a foundational framework, emphasizing the importance of pre-existing intellectual property engagements.

To meet the criteria for submitting rights under the Madrid System, entities can pursue two primary avenues. Firstly, businesses operating in a country that is a signatory to both the Madrid Agreement and the Madrid Protocol are eligible. Notably, Vietnam's accession to these international agreements opens doors for Vietnamese enterprises to submit applications to countries that are members of both frameworks. Alternatively, individuals or organizations can fulfill this criterion by residing in a participating country, thereby establishing a global reach for submissions.

Illustratively, if a client has citizenship or conducts business in Vietnam, the nexus is established with Vietnam, a Madrid System member, requiring the international submission to be routed through the Intellectual Property office of Vietnam.

Secondly, in the realm of premises registration, it is imperative that the customer, who has the right to submit an application, either already possesses a submitted application or has a trademark safeguarded by the Intellectual Property office of Vietnam. The existence of a premise trademark becomes a fundamental prerequisite for initiating the process of international trademark registration through the Intellectual Property office.

Thirdly, delving into the intricacies of the declaration and content, the international application under the Madrid System is to be submitted through the Intellectual Property office. This involves a meticulous verification process, ensuring alignment with the premise mark before the international application is formally submitted to the World Intellectual Property Organization (WIPO). Specific attention is directed towards the declaration and the accompanying list of goods and services:

For the declaration, adherence to the MM2 declaration form is mandatory, available in English, French, and Spanish. Notably, the submission of the MM2 declaration is routed through the Intellectual Property office of Vietnam, emphasizing the importance of the national channel in the international submission process.
Noteworthy is the requirement for all international applications designating the United States of America to include Declaration MM18 – Statement of Intent to Use the Trademark. This underscores the nuanced considerations for specific jurisdictions within the Madrid System.
In compiling the list of goods and services, a meticulous grouping according to the latest International Classification of goods and services (Nice Classification) is essential. Additionally, it is crucial to recognize that after the submission of the MM2 declaration, any attempts to add or expand the category of goods and services require a new international application.

Lastly, to ensure transparency and efficient tracking of application progress, the provision of an email address in section 2 of the international application form (MM2) is pivotal. This not only facilitates email notifications about the application status but also enrolls the applicant in the electronic notification service provided by WIPO. By embracing this digital mechanism, all notices, including deficiency notifications, are seamlessly delivered electronically, obviating the need for traditional paper dispatches from WIPO. This marks a paradigm shift towards a more streamlined and environmentally conscious communication approach within the international trademark registration process.

4. Process of Trademark Application Processing under the Madrid System

In accordance with the comprehensive guidelines stipulated in Article 26 of Decree No. 65/2023/ND-CP, which governs the processing of Madrid Applications, a meticulous multi-step procedure unfolds to ensure the seamless integration of Vietnamese-origin international trademark applications into the global framework.

Step 1 initiates the process by directing applicants to file an international trademark application at the Intellectual Property office, establishing the foundational groundwork for subsequent actions. Moving to Step 2, upon receipt of the Madrid Application of Vietnamese origin, the State management agency vested with industrial property rights assumes the responsibility of meticulous appraisal. This entails a thorough examination to ascertain compliance with prescribed requirements, triggering a series of essential procedures:

In instances where the application exhibits deficiencies, the agency notifies the applicant, stipulating a 3-month window for rectification. Failure to address deficiencies within this timeframe results in the application being deemed withdrawn.
If the application demonstrates no deficiencies or the applicant satisfactorily corrects identified issues, the State management agency proceeds to issue a notice of fees and charges. The applicant is then required to directly pay the specified fees to the International Office, following which the agency certifies the application and transmits it to the International Office within 15 days from the issuance of fees and charges notices.
The date of receipt of the Application of Madrid of Vietnamese origin at the State management agency is considered the date of international registration if the International Office receives the application within 2 months from the date stated on the receipt stamp. Failing this timeframe, the date of receipt at the International Office is deemed the date of international registration.

Step 3 involves the State Administration of Industrial Property Rights notifying the applicant post-submission to the International Office. This phase encompasses ongoing coordination with the applicant to address notices, requests, or any related matters emanating from the International Office.

Moving to Step 4, the World Intellectual Property Organization (WIPO) assumes a pivotal role. Following receipt of the valid application, the International Bureau (IB) conducts a thorough formality check within a 2-4 month timeframe. If the application meets the stipulated formal conditions, it is published in the WIPO Official Gazette, a publication occurring approximately four times a month.

Step 5 unfolds as the application undergoes scrutiny in selected and/or designated countries after its publication in the WIPO Gazette. The assessment for protection aligns with the regulations of each specific country. This period typically spans 12 to 18 months from the date of receipt of the WIPO notification. It is crucial to note that in cases where protection refusal is based on third-party objections, the timeline may be extended. The designated country's national office communicates the deadline for objecting to the application, determining the schedule for issuing a final notice. This nuanced and multifaceted approach ensures a comprehensive and globally aligned processing mechanism for Madrid Applications of Vietnamese origin, facilitating effective integration into the international trademark landscape.

5. Procedures for international trademark registration by Madrid Application with Vietnam designation

In adherence to the intricate provisions articulated in Article 27 of Decree 65/2023/ND-CP, the procedural intricacies surrounding the processing of Madrid Applications with a designation to Vietnam are delineated in a comprehensive manner, ensuring a thorough evaluation and integration into the national industrial property framework.

Upon receipt of the notification from the International Office regarding the Madrid Application bearing Vietnamese designation, the State management agency vested with industrial property rights assumes the crucial responsibility of appraising the application's contents, treating it analogously to a trademark application filed in the national format.

A pivotal timeframe of 12 months unfolds from the issuance of the notification by the International Office, during which the State management agency is mandated to reach a conclusion regarding the protection of the trademark. In instances where the trademark aligns with the stipulated requirements for protection as per Vietnamese law, the subsequent procedures are meticulously executed:

Prior to the expiration of the 12-month period, the State management agency issues a decision acknowledging the protection of the internationally registered trademark in Vietnam. This decision is duly recorded in the National Register of Industrial Property, specifically within the section dedicated to International Registration Trademarks. Simultaneously, the decision is disseminated through an announcement in the Official Gazette of Industrial Property within 2 months from its issuance.
The scope or volume of protection is intricately determined based on the requisite contents outlined in the international registration of trademarks, duly recognized by the International Office and accepted by the State management agency in charge of industrial property rights. This meticulous alignment ensures a harmonized and comprehensive approach to trademark protection within the national landscape.

However, if a trademark encompasses goods and/or services that either fail to meet the conditions for protection or meet the conditions but exhibit shortcomings in international registration, a nuanced process unfolds:

Before the culmination of the 12-month period, the State management agency issues a temporary notice of refusal, explicitly outlining the contents and reasons for the refusal. This notice is promptly dispatched to the International Office.
Within a subsequent 3-month window from the date of issuance of the temporary refusal notice, the applicant possesses the right to rectify deficiencies or address objections raised by the State management agency. This correction or objection resolution follows the same procedural trajectory as trademark applications filed in the national format, encompassing regulations on the filing of such applications.

This intricate and systematic approach, as prescribed by Decree 65/2023/ND-CP, ensures a meticulous and legally sound integration of Madrid Applications with a Vietnam designation into the national industrial property framework, fostering transparency, and upholding the integrity of trademark protection standards.