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A BRIEF INTRODUCTION TO THE MADRID-BASED INTERNATIONAL REGISTRATION OF MARKS
(Ngày đăng: 2018-07-03)

 

How to Protect a Trademark abroad?

 

Nowadays, there are basically two ways of seeking protection of a trademark in a foreign country:

 

  1. Filing VARIOUS APPLICATIONS with countries’ Intellectual Property Offices for getting trademark registered there; or
  2. Filing only ONE application for seeking protection of a trademark in one or tens of countries under the Madrid system.

 

The Madrid System and its Advantages

 

The Madrid system, which is inherently governed by two international treaties namely the Madrid Agreement and the Madrid Protocol, is the system for the international registration of trademarks by providing one single procedure for the registration of a mark in several territories.

There is a total of 101 members covering 117 countries joined the Madrid system till April 13, 2018. Below is a summary of Madrid members sorted by geographical area:

 

Madrid members sorted by geographical area

Countries

Southeast Asia

Vietnam, Cambodia, Singapore, Philippines, Laos, Thailand, Brunei Darussalam

 

Asia

Japan, Korea, Democratic People's Republic of Korea, Singapore, Vietnam, China, Philippines, Mongolia, Kazakhstan, Tajikistan, Turkmenistan, Azerbaijan, Armenia, Bhutan, Georgia, Uzbekistan, Kyrgyzstan, Cambodia, India, Laos, Afghanistan, Indonesia

 

 

Europe

Albania, Armenia, Austria, Netherlands, Belarus, Belgium, Luxembourg, France, Germany, Italia, United Kingdom, Spain, Portugal, Denmark, Sweden, Norway, Bosnia and Herzegovina, Bulgaria, Hungary, Romania, Slovenia, Slovakia, Serbia, Swaziland, Turkey, Czech, Liechtenstein, Latvia, Moldova, Monaco, Montenegro, Lithuania, Russia, Curaçao, Estonia, Cyprus, Ireland, Iceland, Greece, Croatia, Finland, Macedonia, San Marino, Ukraine, European Union[1]

 

Africa

OAPI[2] ( gồm 17 thành viên: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo Brazzaville, Côte d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo), Algeria, Egypt, Botswana, Gambia, Ghana, Kenya, Morocco, Lesotho, Madagascar, Sudan, Zambia, Mozambique, Namibia, Sierra Leone, Sao Tome and Principe, Liberia, Swaziland, Rwanda, Tunisia, Zimbabwe

Middle East

Israel, Bahrain, Iran, Oman, Syria, Ira

America

United States of America, Cuba, Antigua and Barbuda, Mexico, Columbia, Bonaire, Sint Eustatius and Saba

Australia

Australia, New Zealand

Total of members

101 members till April 13, 2018

 

Vietnam is the member of both the Madrid Agreement and the Madrid Protocol.

 

The advantages of the Madrid system comprise:

  • geographically, an applicant using the Madrid system can apply for protection of a mark in more than 100 territories (“Contracting Parties”) by filing a single application in one language and by paying a single set of fees, instead of filing separate applications in the different Intellectual Property Offices of the various territories;
  • regardless of where the applicant wishes to protect his mark, using the Madrid system he will only have to file his application in just one of the languages of the Madrid system, namely English, French or Spanish;
  • if the Office of a Contracting Party does not notify a refusal within the time limit that is specified in the Madrid system, the mark will automatically enjoy protection in the Contracting Party in question;
  • after the trademark has been registered through the Madrid system, the holder of the international registration can extend its geographical scope to additional Contracting Parties in a quick, simple and cost-effective manner;
  • no matter how many Contracting Parties have been included in the international registration of a mark using the Madrid system, there will be just one single expiry date and the registration can be renewed simply (and also electronically) for all or any of the Contracting Parties included in the registration;
  • administration costs such as translation of the list of goods and services and representative fees are less, compared to several filings in national territories;
  • generally, less delays are encountered, due to the use of a single administration;
  • managing a trademark portfolio registered through the Madrid system, e.g. change in ownership, licensing, etc., is more cost-effective.

Who is Entitled to Use the Madrid System?

 

The Madrid system of international registration of marks may be used only by a natural person or a legal entity bearing nationality of a country which is party to the Madrid system.

 

An application for international registration must be presented to the International Bureau (“IB”) under the World Intellectual Property Organization (“WIPO”) through the Office of origin. For example, if the Office of origin is Vietnam, an international application shall be accepted only if the applicant thereof is a Vietnam entity[3].

 

Brief Description of Procedures under the Madrid System

 

IB notifies each Contracting Party in which protection has been requested after IB has received international application dispatched by the Office of origin. From the date of the international registration, the protection of the mark in each of the designated Contracting Parties is the same as if the mark had been deposited directly with the Office of that Contracting Party.

 

Each designated Contracting Party has the right to refuse protection, within the time limits specified in the Agreement or Protocol.  Unless such a refusal is notified to IB within the applicable time limit, the protection of the mark in each designated Contracting Party is the same as if it had been registered by the Office of that Contracting Party. 

 

The time limit for a Contracting Party to notify a refusal is generally one year. Under the Protocol however, a Contracting Party may declare that this period is to be 18 months (or longer, in the case of a refusal based on an opposition).

 

For a period of five years from the date of its registration, an international registration remains dependent on the mark registered or applied for in the Office of origin. If, and to the extent that, the basic registration ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, through voluntary cancellation or through non-renewal, within this five-year period, the international registration will no longer be protected.

 

Similarly, where the international registration was based on an application in the Office of origin, it will be cancelled if, and to the extent that, that application is refused or withdrawn within the five-year period, or if, and to the extent that, the registration resulting from that application ceases to have effect within that period.

 

After the expiry of this period of five years, the international registration becomes independent of the basic registration or basic application.

 

An international registration may be maintained in force indefinitely by the payment, every 10 years, of the prescribed fees.

 

Basic Principles of Fee Calculation

 

The Madrid Agreement and the Madrid Protocol are independent, parallel treaties, with separate, but overlapping, memberships.  It follows that, as long as all countries party to the Madrid Agreement have not joined the Protocol, there are currently two groups of members of the Madrid Union:

 

·States and organizations party only to the Protocol, and

·States party to both the Madrid Agreement and the Protocol. 

 

The question then arises of which treaty will be binding between States party to both the Agreement and the Protocol. Below is the Schedule of Fees to be paid to WIPO by the applicant.

 

1. International applications governed exclusively by the Agreement

The following fees shall be payable and shall cover 10 years:

 Swiss Francs

1.1 Basic fee

 

1.1.1 where no reproduction of the mark is in color

653

1.1.2 where any reproduction of the mark is in color

903

1.2 Supplementary fee for each class of goods and services beyond three classes

100

1.3 Complementary fee for the designation of each designated Contracting State

100

2. International applications governed exclusively by the Protocol

The following fees shall be payable and shall cover 10 years:

Swiss Francs

2.1 Basic fee

 

2.1.1 where no reproduction of the mark is in color

653

2.1.2 where any reproduction of the mark is in color

903

2.2 Supplementary fee for each class of goods and services beyond three classes, except if only Contracting Parties in respect of which individual fees (see 2.4, below) are payable are designated

100

2.3 Complementary fee for the designation of each designated Contracting Party, except if the designated Contracting Party is a Contracting Party in respect of which an individual fee is payable (see 2.4 below)

100

2.4 Individual fee for the designation of each designated Contracting Party in respect of which an individual fee (rather than a complementary fee) is payable of the Protocol) except where the designated Contracting Party is a State bound (also) by the Agreement and the Office of origin is the Office of a State bound (also) by the Agreement (in respect of such a Contracting Party, a complementary fee is payable): the amount of the individual fee is fixed by each Contracting Party concerned

 

 3. International applications governed by both the Agreement and the Protocol

The following fees shall be payable and shall cover 10 years:

Swiss Francs

3.1 Basic fee

 

3.1.1 where no reproduction of the mark is in color

653

3.1.2 where any reproduction of the mark is in color

903

3.2 Supplementary fee for each class of goods and services beyond three classes

100

3.3 Complementary fee for the designation of each designated Contracting Party in respect of which an individual fee is not payable(see 3.4, below)

100

3.4 Individual fee for the designation of each designated Contracting Party in respect of which an individual fee is payable, except where the designated Contracting Party is a State bound (also) by the Agreement and the Office of origin is the Office of a State bound (also) by the Agreement (in respect of such a Contracting Party, a complementary fee is payable): the amount of the individual fee is fixed by each Contracting Party concerned

 

 

Please see below examples illustrating fee calculation applicable for international applications under one of the 2 above-mentioned situations respectively:

 

Example 1: An international application containing the mark A (in color) in class 03 originating from Vietnam seeking protection in 7 countries/region: Australia, Bahrain, European Union, Japan, Singapore, United States, Korea (these countries are parties to the Madrid Protocol only):

    

Description

Swiss Francs

1.Basic fee

903 

2. Individual fee payable to Australia

263

3. Individual fee payable to Bahrain

1710

4. Individual fee payable to European Union

897

5. Individual fee payable to Japan

377

6. Individual fee payable to Korea

233

7. Individual fee payable to Singapore

242

8. Individual fee payable to the United States

388

Total

4,744

 

Example 2: An international application containing the mark A (in color) in class 03 originating from Vietnam seeking protection in 7 countries: Bulgaria, China, Cuba, Italy, Kyrgyzstan, Swaziland and Tajikistan (these countries are both party to the Madrid Agreement and the Madrid Protocol)

 

Description

Swiss Francs

1.Basic fee

903 

2. Complementary fee for the designation of each designated Contracting State:

7 countries x 100CHF

700

Total

1,603

 

 

Below are some trademarks successfully represented by Bross & Partners


Bross & Partners, a Vietnamese registered Patent, Design, Trademark and Copyright agent, constantly ranked by Managing Intellectual Property, World Trademark Review, The Legal 500 Asia Pacific, AsiaLaw Profiles and Asian Legal Business. We are providing clients all over the world the reliable, affordable contentious and non-contentious IP services including IP enforcement, anti-counterfeiting, litigation and domain name recovery before courts and arbitrations. For further discussion, please get in touch with us via vinh@bross.vn or contact@bross.vn or saigon@bross.vn

 


[1] European Union (comprising 28 member states: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom and Croatia) participated in the Madrid Protocol as an organization member since October 1st, 2004. Thus, only by designating the European Union in the international application, the applicant has an opportunity to protect its mark in the 28 member countries of the European Union

[2] OAPI is the English name of the African Union Intellectual Property Organization located in Yaoundé, Cameroon, which was established based on the Bangui Agreement of March 2, 1977, as amended in 1999. OAPI has a total of 17 members, namely Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo Brazzaville, Côte d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo. Since OAPI has participated in the Protocols Protocol as an organization member (same like the European Union) as of March 5, 2015, it is only necessary to designate the OAPI in the international application as having the opportunity to be protected mark at 17 member states of OAPI.

 

[3] FDI enterprises established in Vietnam or Vietnamese companies whose capital is partially or wholly owned by foreign individual or foreign entity are all regarded as Vietnamese entities

 

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