An applicant for International Trademark Registration under Madrid System should be a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or Protocol, or who has such an establishment in, or is domiciled in, the territory of an intergovernmental organization which is a party to the Protocol, or is a national of a Member State of such an organization.
The determination who is entitled to file the international application in each Contracting Party is governed by the domestic legislation in that country.
2. Basic application and basic registration
An International Trademark Registration must be based on a national application (the “basic application”) where the International Application is governed by exclusively by the Madrid Protocol or registration (“the basic registration”) in the Trademark Office of the Contracting Party.
2.1 International application of trademark
An International Trademark Application must be made in the prescribed form and presented to the WIPO’s IB through the Office of Origin. In Vietnam, the Office of Origin is the National Office of Intellectual Property of Vietnam (“NOIP“) in Vietnam.
The International Trademark Application must contain a reproduction of the mark which must be identical with that in the basic registration or basic application and a list of the goods and/or services for which protection is sought, classified in accordance with the International Classification of the Goods and Services (Nice Classification).
An International Trademark Application must designate one or more Contracting Parties in which the mark is to be protected. It may not designate the Contracting Party whose Office is the Office or Origin. In other words, a Vietnamese applicant may not include Vietnam as one of its designated Contracting Parties. A Vietnamese applicant may benefit from the fact that Vietnam is a member of both Madrid Protocol and Madrid Agreement, so that the designation may be extended into all countries members of the Madrid Union regardless that countries are Contracting Parties of the Protocol or Agreement. Thus, the extension of trademark protection for SMEs is available now for their potential markets, such as China, European countries and USA.
2.3 “Safeguard clause”
Where both Contracting Parties are party to both the Madrid Agreement and the Madrid Protocol, the designation will be governed by the Madrid Agreement. This follows from the so-called ‘safeguard” clause in accordance with the Article 9sexies of the Protocol.
However, according to the recent amendment to the Article 9sexies16, the Protocol will (as from 1st September 2008) will apply between States bound by both the Agreement and Protocol.
The example for this case is designation to China, Korea and Russia.
There are three kinds of international application of trademark:
§ The International Trademark Application governed exclusively by the Agreement, i.e. all the designations are made under the Agreement;
§ The International Trademark Application governed exclusively by the Protocol, i.e. all the designation are made under the Protocol; and
§ The International Trademark Application governed by both the Agreement and the Protocol, i.e. some designations are made under the Agreement and some under the Protocol.
If the international application is governed exclusively by the Agreement, it must be in French.
If it is governed exclusively by the Protocol or by both the Agreement and the Protocol, it may be in English, French or Spanish. The National Office of Intellectual Property of Vietnam allows applicants of the International Trademark Application chose English or French in this regard.
2.5 Priority claimed for Int’l Trademark Application in Vietnam
Priority of an earlier filing may be claimed under Article 4 of the Paris Convention provided that such claim is requested and the date of the international application is not later than six months after the earlier filing
2.6 Fees for International Trademark Application in Vietnam
The International Trademark Application is subject to the payment of the following fees:
§ Basic fee (the basic fee for black-white mark is 653 Swiss francs, and that for color mark is 903 Swiss Francs);
§ Supplementary fee for each class of goods/services beyond 03 classes (this fee is 73 Swiss Francs);
§ Complementary fee for the designation of each designated Contracting Party for which no individual fee is payable (this fee is 73 Swiss Francs);
§ Individual fee for the designation of each designated Contracting Party for which individual fee is payable.
The required fees may be paid direct to the WIPO’s IB or through the Office of Origin whether such office accepts to collect and forward such fees
3.1 Filing International Trademark Application in Vietnam
An International Trademark Application should be present by the applicant or his authorized representative to the WIP’s IB through the Office of Origin. If the application is presented directly to the IB, it will not be considered as such and will be returned to the sender.
3.2 Check for minimum requirements by the Office of Origin – NOIP
The Office of Origin (NOIP) will check whether the filed application satisfies the minimum requirements of an International Trademark Application, including the conformity of the filed International Trademark Application to the basic application or basic registration in regard to the applicant’s name; reproduction of the mark; color of mark; goods/services and designation, etc.
After initial check, if there is any insufficiency, the Office of Origin (NOIP) will require the applicant to correct it.
The Office of Origin (NOIP) may also require the applicant to pay the national fee, at its own discretion, apart from the international fee that should be paid by the applicant to the WIPO’s IB, directly or through the Office of Origin as prescribed in the legislation of each Contracting Party
3.3 Certify the date of International Trademark Application and conformity to the basic application/registration by the Office of Origin
If an International Trademark Application is deemed proper, the Office of Origin will certify that the particulars appearing in the international application correspond to the particulars appearing, at the time of the certification, in the basic application or basic registration.
The Office of Origin will also certify the date on which it receives the International Application. This date will be considered as the date of the International application provided that the subject application reaches the International Bureau within 2 months counted from the date of receipt by the Office of Origin. If the International Bureau does not receive the document within 2 months as from the date of receipt by the Office of Origin, the date of the International application will be the date on which the IB receives the application.
3.4 Transfer of the International Application to the WIPO’s IB by the Office of Origin
The International Trademark Application may be sent by the Office of Origin (NOIP) to the WIPO’s IB by fax, ordinary mail or electronic means agreed upon between the WIPO’s IB and the Office concerned.
Where the International Trademark Application is transferred by the Office of Origin (NOIP) to the bearing the reproduction of the mark, signed by the Office of Origin and containing sufficient indications to allow identification of the International Application to which it relates should be sent to the WIPO’s IB.
3.5 Formality check by the WIPO’s IB
Upon receiving the International Trademark Application, the WIPO’s IB determines whether the filing requirements are met and whether the listed goods/services are properly classified, whether necessary fees have been properly been paid, etc.
The Office of Origin and the applicant are informed of any irregularities that must be remedied within three months. Otherwise, the International Trademark Application will be considered abandoned.
3.6 Registration and Publication by the International Bureau
If the international application complies with the applicable requirements, the mark is recorded in the International Register. The International Bureau shall notify the international registration to the Office of the designated Contracting Parties and inform the Office of Origin accordingly and send a certificate to the holder22. In 2007, there are 38,471 marks registered in the International Register