Pros and cons of filing an international trademark application through the Madrid system

Pros and cons of filing an international trademark application through the Madrid system

0
118

Along with the Industrial Revolution 4.0 that is taking place strongly in the world is the trend of global integration of large and small businesses in Vietnam today. In fact, learning from the experience of Vietnamese trademarks that have been infringed in foreign markets before, recently many businesses have consciously protected their trademarks before building and developing their brands worldwide. According to regulations, to register trademarks in other countries, Vietnamese businesses can consider choosing the following options:

– Register your trademark directly with the Intellectual Property Office of each country;

– Based on the original application/original protective certificate filed/registered in Vietnam to file a trademark registration application, through the NOIP, designating multiple countries at the same time as members of the Madrid Protocol and the Madrid Agreement (hereinafter referred to as the Madrid system).

Although each option has its own advantages and disadvantages, depending on the country and the purpose the business wants to achieve, it is remarkable that the number of businesses that interested in and looking to the method of international trademark registration through the Madrid System is prevailing. Therefore, trademark owners should equip themselves with the most comprehensive knowledge of the Madrid System before deciding to proceed with the registration.

First of all, in terms of advantages:

  • With just one application through the Madrid System, an applicant can simultaneously process an application in 124 countries in the Madrid System and pay fees at once instead of having to apply directly multiple times and visit intellectual property offices of each country from different territories around the globe;
  • After having registered a trademark through the Madrid system, the trademark owner can further expand the scope of protection of the mark by designating more member states of the Madrid System which is explicitly fast, simple and cost-effective;
  • No matter how many countries an applicant designates for international trademark registration through the Madrid System, there is only one expiration date, whereby the trademark owner can easily and conveniently renew trademark in all or any of the designated countries.

However, along with these superior benefits, applying through the Madrid System also has a number of limitations that applicants should be aware of:

  • According to the Central Attack rule, within 5 years from the date of international registration, the trademark under international registration is completely dependent on the validity of the trademark registered in its original country (basic application or basic registration). Even when an applicant’s trademark application in Vietnam has been granted protection by the National Office of Intellectual Property of Vietnam (base country), if this registration is invalidated by a third party or for any other reason, the international trademark will be invalidated in all countries. After 5 years from the date of international registration, the international trademark can be completely independent of the national trademark.

    Nevertheless, in order to minimize the adverse effect of the Central Attack rule, the Madrid System allows trademark owners to transform of the cancelled international registration into multiple national or regional applications within 3 months of the official notification of cancellation by the International Bureau and provided that must pay an additional transformation fee according to the laws of each transformed country. In particular, the national and regional applications still benefit from the same date of priority as the cancelled international registration.

  • In addition, in accordance with the general regulations of the Madrid System, the owner of an international trademark registration is only allowed to assign the trademark to an individual/juridical person having the nationality of the Madrid member state. This means that it is impossible to assign in whole or in part the international registration to an actor whose nationality is not a member of Madrid.

To sum up, except for the limited regulations that trademark owners need to be careful to comply, registering an international trademark through the Madrid system is a great step forward in protecting the rights and interests of the owners internationally, reducing the cost of trademark protection and helping to build valuable intellectual property.