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:

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.

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):

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)

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