9 Key Advantages of the Madrid System for Internationally Registering Trademarks Abroad | 9 Key Advantages of the Madrid System for Internationally Registering Trademarks Abroad

9 Key Advantages of the Madrid System for

Internationally Registering Trademarks Abroad

Attorney Le Quang Vinh – Bross & Partners

Vietnam's accession to the Madrid Agreement from March 8, 1949 and Madrid Protocol from July 11, 2006 (the “Madrid System”) [1] is a good opportunity to help Vietnamese businesses save costs and time for registering their trademarks in foreign market in a simpler way with a lower cost than the traditional way of filing a trademark application in each country. Ranked as Tier 1 for intellectual property law firm by Legal 500 Asia-Pacific with much experience in helping hundreds of clients to successfully obtain hundreds of trademarks abroad including the Madrid-based trademarks, Bross & Partners would like to introduce 9 key advantages of the Madrid System.

9 Key Advantages

1. Applicants/holders only need to file 01 application in 01 language with 01 fee payment in Swiss Franc (CHF)[2] to have a chance to successfully register their trademarks in more 100 countries.

2. Holders also only need to submit 01 renewal application in 01 language with 01 single payment to maintain the validity for the next 10 years for that international registration.

3. Similarly, other procedures such as recordal of change in holder’s name/address, limiting classes or list of goods classification, and transferring a Madrid trademark can all be done with 01 application with 01 fee payment only.

4. Cost for international registration of trademark is cheaper than filing a registration application in each country because neither translations, nor foreign lawyers, nor courier documents are required.

5. Subsequent designation of new countries may be done on the current an international registration with 01 application with 01 fee payment only.

6. Holders only must pay the standard fee instead of the individual fee if designated countries are also parties to both the Madrid Agreement and Madrid Protocol. For example, instead of paying fees CHF499 for 3 classes for China and CHF356 for Cuba, they only must pay CHF100 for each of these countries.

7. Applicants can obtain the exclusive rights of a trademark in EU[3] (27 countries) and the Organization of African Intellectual Property (OAPI) consisting of 17 countries simply by designating EU and OAPI as two corresponding members.

8. Applicants can claim priority date for international registration to be the filing date of their first application appearing in the basic application or basic registration in the country of origin without requirement of priority document, translation, or fee for priority claim provided that the international application is filed no later than 6 months from the date on which the basic application was filed with the country of origin.

9. Holders/applicants can transform their international registrations subject to ceasing of effect as a result of the rule “central attack”[4] into national registrations (transformation fee is additionally required) because of the trademark in the basic application or basic registration refused/invalidated/cancelled in the country of origin within 5 years from the date of international registration.

Conditions for International Registration of Trademark

An application for international registration of a mark is accepted if all four conditions are satisfied:

ü A trademark in an international application must have been registered (Basic Registration) or filed and pending (Basic Application) in the country of origin (Vietnam); and

ü A trademark in an international application (ie. reproduction of trademark and list of goods/services seeking for protection) must be the same as those included in Basic Registration or Basic Application in the country of origin (Vietnam); and

ü Applicants/holders domicile or have Vietnamese nationality or have a real and effective business establishment in Vietnam

ü A designated country is a member of the Madrid System

Example 1: Trademark Trung Nguyen & device (IRN 1441923) as shown below is eligible to apply for international registration under the Madrid System designating all 10 countries as it satisfies all 4 of the above conditions:

Reproduction

of Trademark

in Vietnam

Details

Holder

Designated Countries

Reg No. 50753 granted Nov. 26, 2003

Class 30: Coffee

Trung Nguyen Investment Corporation

Australia, China, Indonesia, India, Laos, Mongolia, New Zealand, Philippines, Thailand, Russia

Fees for International Registration

Applicants/holders must pay 4 types of fees (Government fees) in addition to the fee to hire a representative lawyer (if any), including: (1) fee for processing an international application in the country of origin (VNIPO); (2) international application processing fee by WIPO; (3) standard fee applicable in countries that did no declare individual fee; (4) individual fees in countries that declared individual fee. Therefore, depending on the number of countries to be protected, whether the trademark is color or black and white, and number of classes by the Nice classification, cost of international registration may vary but in general cost is low, especially where an international application designates multiple countries, average cost in each country will be much lower than that of registration in each country.

The following two illustrative examples show that an applicant only has to pay about 95CHF/country if registering 1 class or only 162CHF/country if registering 3 classes when registering in 32 countries (5 designated countries plus EU having 27 member states)[5]:

Example 2: International Registration for 01 Trademark for 01 class designating 32 countries: China, Cuba, US, EU, Japan and Korea	Fee (CHF)
Fee payable for the country of origin (Vietnam) [2 million VND is temporarily convered into 77.45CHF]	77.45
Basic fee payable for WIPO for colored trademark [in case of black & white, fee would be 653CHF]	903
Standard fee payable for designated countries where standard fee is applicable
China	100
Cuba	100
Individual fee payable for designated countries where individual is applicable
US	460
EU	897
Japan	300
Korea	224
Total	3,061.45
Example 3: International Registration for 01 Trademark for 03 classes designating 32 countries: China, Cuba, US, EU, Japan and Korea	Phí (CHF)
Fee payable for the country of origin (Vietnam) [2 million VND is temporarily convered into 77.45CHF]	77.45
Basic fee payable for WIPO for colored trademark [in case of black & white, fee would be 653CHF]	903
Standard fee payable for designated countries where standard fee is applicable
China	100
Cuba	100
Individual fee payable for designated countries where individual is applicable
US	1,380
EU	1,116
Japan	862
Korea	672
Total	5,210.45

Process for Examination

Firstly, an international application must be submitted to the Intellectual Property Office of the country of origin (VNIPO) for its formal examination within no more than 2 months prior to its submission to WIPO. Upon receiving the international application, WIPO will only continue to conduct formality examination (classification of goods/services, fees for international registration) before it concludes 3 actions: (a) to publish the international application in the WIPO Gazette of International Marks; (b) to issue and send a Certificate of Registration of Mark; and (c) to notify designated countries. Finally, an internationally registered mark will be subject to substantive examination by each of the designated countries according to their national legislation within 12 months or 18 months (for countries declared that 18-month period of refusal is applied)[6] from the date of recording by WIPO. As a result of this substantive examination, holders/applicants may receive a statement of grant of protection[7] or provisional total/partial refusal of protection by the designated country.

Example 4: WIPO Gazette No. 37/2014 publishing trademark Vinamilk

Example 5: Certificate of Registration by WIPO and Certificate of Registration of Mark by USPTO

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Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has much experience in registering trademark abroad and resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.

[1] As of February 1, 2023, the Madrid System has 113 members covering 129 territories and accounting for over 80% of total global trade. In addition to national members, the Madrid System also has members that are intergovernmental organizations such as the European Union, the African Intellectual Property Organization. See more: https://www.wipo.int/madrid/en/members/

[2] Only 3 contracting countries including Brazil, Cuba and Japan are required to pay the fee in 2 installments (application stage and notice of grant of protection). See more: https://www.wipo.int/madrid/en/members/declarations.html

[3] In addition to the route of international registration under the Madrid System, holders/applicants can also choose to register their trademark in the EU-wide in the form of an EU trademark.

[4] According to Article 6 Madrid Protocol, "central attack" is a legal principle stating that a trademark under international registration is dependent on validity of trademark in a basic application or basic registration within 5 years from the date of international registration. This means that if the trademark in the basic application or basic registration is refused/invalidated/cancelled for any reason, the international registration will automatically become invalid accordingly. Beyond the five-year dependence period mentioned above, the international registration would become independent from the basic application or basic registration.

[5] Fees herein are determined according to WIPO's Madrid Fee Calculator as of 1 February 2023 and it is subject to change according to each member country's declaration of fee change submitted to WIPO.

[6] A member state shall submit a written statement to WIPO stating that it will apply a period of 12 months or 18 months of substantive examination before declaring grant of protection or refusal of protection of the mark under international registration. For example, the following countries deposited written declarations to apply the 18-month refusal period under Article 5(2)(b) Madrid Protocol: African Intellectual Property Organization (OAPI), Algeria, Antigua and Barbuda, Armenia, Australia, Bahrain, Belarus, Brazil, Brunei Darussalam, Bulgaria, Cambodia, Canada, Chile, China, Colombia, Cyprus, Denmark, Estonia, European Union, Finland, Gambia, Georgia, Ghana, Greece, Iceland, India, Indonesia, Iran, Ireland, Israel, Italy, Jamaica, Japan, Kenya, Lao People's Democratic Republic, Liechtenstein, Lithuania, Madagascar, Malawi, Malaysia, Mexico, New Zealand, Norway, Oman, Pakistan, Philippines, Poland, Republic of Korea, Samoa, San Marino, Singapore, Slovakia, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, Thailand, Trinidad and Tobago, Tunisia, Türkiye, Turkmenistan, Ukraine, United Arab Emirates, United Kingdom, United States of America, Uzbekistan, Zimbabwe. See more: https://www.wipo.int/madrid/en/members/declarations.html

[7] Most member states of the Madrid System only issue a written statement of grant of protection, if the 12-month or 18-month substantive examination ends without grounds for refusal. However, some countries issue a paper/electronic copy of trademark registration certificate in replacement, including the United States, Korea, and Japan.