Trademark registration through the Madrid system

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Trademark registration through the Madrid system

The Madrid system for international registration of trademarks is mainly composed by the Madrid Protocol and the Madrid Agreement. Through the Madrid system, applicants will save a lot of effort and cost when they want to register their trademarks in many countries around the world. Accordingly, a trademark registered or renewed in one country can be legally registered and used in any member country of the Madrid system.

First of all, in order to be able to use the Madrid system, the applicant needs to have a nationality of one of the countries that are members of the Madrid System. If they do not have citizenship, they must have an industrial or commercial establishment operating in a member state of the Madrid System.

Procedure for filing a trademark application through the Madrid system

To file a trademark application through the Madrid system, the applicant must first submit a trademark application (base application) to the NOIP or the Office in charge of processing trademark applications in the member country of the Madrid system.

On request, NOIP will send such application to the World Intellectual Property Organization (WIPO) (There is a tight timeframe for sending this application from the IP Office to WIPO – In Vietnam, it is up to 30 days from the date of receipt of all valid application documents)

The application is then examined in formality by WIPO and sent to the target countries in the Madrid System because it is not necessary for an applicant to register a trademark for all member states of the Madrid system. Instead, they can select certain countries as target markets for further development.

trademark registration through the Madrid system

The trademark office of each designated country then conducts an examination of the application, also known as the national phase. Each country will have its own regulations on examinations and accordingly, the time frame of the examination and the requirements for the content of the registration will also be different. Thereby, the application, even though it is accepted, registered in the host country may also be rejected in the target country.

If rejected, the applicant can make corresponding amendments and resubmit the application. It should be noted that in this case, the applicant will need to use the services of an industrial property agent in the target country to contact and respond to the registry.

Some points for improvement of the Madrid system

The Madrid trademark application for all member countries is counted as a single application, saving time and effort in translating, modifying, and tracking the status of each application, etc.

However, because it is a single application, it will not be flexible. Currently, the Madrid system is the most advanced system of multinational trademark registration in the world, but due to the nature of barriers between countries, this system is still incomplete, most easily demonstrated as the application in an approved country does not mean that the application will also be accepted in other member countries.

Sometimes, single content is problematic because it contains characters or descriptions that are not suitable for a country’s regulations. Or, sometimes it will be with the required attachments in one country that most other countries won’t need, mainly the ‘Declaration of Use’ document. Accordingly, the countries that need this document will not accept the application if the applicant does not submit it from the beginning, thereby having to amend, supplement, and cause inconvenience and cost.

In addition, despite being a single international application, an international trademark registration application through the Madrid system is still highly dependent on a base application in the country of origin. Thereby, if for any reason that led to the first trademark application being canceled, denied, or invalidated, it is still capable of affecting internationally registered trademarks, even if it is not of the owner’s will or intent.

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