international registration of trademark under … report_ngocbich_23032008.pdf · trademark...

JPO-sponsored Fellowship Study-cum-Research 1st October 2007 – 31st March 2008

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INTERNATIONAL REGISTRATION OF TRADEMARK

UNDER MADRID PROTOCOL & MADRID AGREEMENT

Vietnam’s Approach in reference to the Japanese Experience

Supervisor: Professor YOSHITOSHI TANAKA Tokyo Institute of Technology (TIT)

Japan

Researcher: NGUYEN THI NGOC BICH Vietnam Institute of Intellectual Property (VIPI)

Vietnam

Supporter: APIC – JIII Japan

Tokyo, March 2008

JPO-sponsored Fellowship Study-cum-Research on Madrid System (October 2007 – March 2008)

Final Report submitted by Nguyen Thi Ngoc Bich (VN) on March, 2008 i

ACKNOWLEDGEMENT

I would like to express my high appreciation to following institutions for sponsoring this study-cum-research and giving me this unique opportunity to enhance my IP knowledge and expertise: The Japan Patent Office (JPO); The National Office of Intellectual Property of Vietnam (NOIP); Asia-Pacific Industrial Property Center (APIC) of Japan Institute of Invention

and Innovation (JIII); Graduate School of Tokyo Institute of Technology (TIT); and Vietnam Institute of Intellectual Property (VIPI)

I express my sincere gratitude and appreciation to Prof. Yoshitoshi TANAKA - my supervisor - for providing me with the valuable chance to work in the advanced research area of IP management, for his professional guidance and advice, and for his encouragement and support at all levels. My sincere thanks are addressed to his students of the Graduate School of Tokyo Institute of Technology for their friendship and hospitality. I wish to acknowledge my high appreciation and faithful thanks to the Director General of NOIP - Mr. Tran Viet Hung - who shares his valuable time for my research theme. His valuable guidance and advice make all the difference in my research orientation. I would like to express my special thanks to following individuals for their excellent support and valuable assistance for my research work and training activities in Japan: Ms. Emi TAGUCHI and Ms. Mari MORI of JPO; Mr. Toshiyasu MATSUTANI and Ms. Noshiro CHIE of APIC-JIII; honorable officers and dearest staff of APIC-JIII; senior colleagues at JPO, AIPPI, Japanese companies, IP Agents who spend their valuable time and share experience in the interviews and responses to the questionnaires; senior officers and valuable colleagues in NOIP, VIPI, VIPA, Academy of Justice, Hanoi National University and Hanoi Law University; My deepest thank is addressed to Mr. Nalini Kanta Mohanty, my co-researcher from India, for his cooperative and considerate attitude and friendship. Last, but not least, I would like to thank my family and friends for their wonderful sentiment and continuous encouragement. My highest appreciation is reserved for my respectful husband - Mr. Le Minh Tuan for his life-long love, selfless efforts and understanding, for my lovely children, Ms. Le Minh Trang & Mr. Le Thanh Trung who give endless strength to my daily life. Without them, this research could not have been completed.


Final Report submitted by Nguyen Thi Ngoc Bich (VN) on March, 2008 ii

Abbreviation WIPO World Intellectual Property Organization JPO Japan Patent Office NOIP Vietnam National Office of Intellectual Property Madrid Agreement Madrid Agreement Concerning the International

Registration of Marks Madrid Protocol Protocol relating the Madrid Agreement Concerning

the International Registration of Marks Common Regulations Common Regulations under the Madrid Agreement

Concerning the International Registration of Marks and the Protocol relating to that Agreement (as in force on April 71, 2007)

Administrative Instruction Administrative Instructions for the Application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol relating thereto (as in force on January 1, 2005)

List of Tables Table 1. Tendency of accession to the Madrid System Table 2 Difference between the Madrid Protocol and Madrid Agreement Table 3. International registrations of trademark originated from Vietnam Table 4. International applications designating & subsequently designating

Vietnam (2002 – 2007) Table 5. Fees for International Application to be paid to International Bureau Table 6. Specific features of the trademark examination in Japan and Vietnam List of Figures Figure 1. Trademark applications filed directly to NOIP ( 2000 – 2007) Figure 2. Tendency in national trademark application in Vietnam in 1998 and 2007 Figure 3. Procedure of International Application of Trademark Figure 4. VN-originated international Registration of Trademark (1949 – 2007) Figure 5. Tendency of preferred use of Madrid Protocol by Vietnamese users

(2006 – 2007) Figure 6. Trademark applications in Vietnam from 2000 to 2007 Figure 7. International applications designating & subsequently designating

Vietnam (2000 – 2007) Figure 8. International applications originating from Japan (2000 – 2007) Figure 9. Tendency in JP-originated designation (2000 – 2007) Figure 10. International applications designating Japan (2000 – 2007) Figure 11. Trademark applications in Japan (2000 – 2006) and examination period Figure 12. International Registration of Trademark under Madrid System –

Examination by International Bureau Figure 13. Trademark Registration Procedure under Madrid Protocol in Vietnam Figure 14. Trademark Registration Procedure under Madrid System in Vietnam.


Final Report submitted by Nguyen Thi Ngoc Bich (VN) on March, 2008 iii

TABLE OF CONTENTS

CHAPTER 1. INTRODUCTION.......................................................................... 2 1.1. Background ..................................................................................... 2 1.2. Objectives ........................................................................................ 4 1.3. Scope of research ........................................................................... 4 1.4. Methodology .................................................................................... 5

CHAPTER 2. OVERVIEW OF THE MADRID SYSTEM..................................... 6 2.1. General Information ........................................................................ 6 2.2. Minimum requirements of an International application ............... 7

2.2.1 Applicants...................................................................................... 7 2.2.2 Basic application and basic registration ........................................ 7 2.2.3 International application of trademark ........................................... 8 2.2.4 Designation ................................................................................... 8 2.2.5 “Safeguard clause” ........................................................................ 8 2.2.6 Language ...................................................................................... 9 2.2.7 Priority claimed.............................................................................. 9 2.2.8 Fees .............................................................................................. 9

2.3. General Procedure ........................................................................ 10 2.3.1 Filing international application of trademark ................................ 11 2.3.2 Check for minimum requirements by the Office of Origin ............ 11 2.3.3 Certify the date of International Application and conformity to

the basic application/registration by the Office of Origin.............. 11 2.3.4 Transfer of the International Application to the International

Bureau by the Office of Origin ..................................................... 11 2.3.5 Formality check by the International Bureau ............................... 12 2.3.6 Registration and Publication by the International Bureau............ 12

2.4. Advantage and Disadvantage of the Madrid System ................. 12 2.4.1 Advantages ................................................................................. 12 2.4.2 Disadvantages ............................................................................ 13

2.5. Difference between Madrid Agreement and Madrid Protocol.... 15 2.5.1 Basic of an international registration: .......................................... 15 2.5.2 Filing language............................................................................ 15 2.5.3 Safeguard clause ........................................................................ 15 2.5.4 Remedy to central attack............................................................. 15 2.5.5 Time limit for refusal period ......................................................... 16 2.5.6 Validity......................................................................................... 16 2.5.7 Fee structure. .............................................................................. 16 2.5.8 Flexibility for choice of Office of Origin ........................................ 16 2.5.9 Memberships............................................................................... 17

2.6. Comparative analysis on the current situation of using Madrid system in Vietnam and Japan ...................................................... 17

2.6.1. Analysis on the Vietnam-originating International application ..... 18 2.6.2. Analysis on the International application designating Vietnam.... 21 2.6.3. Analysis on the Japan-originating international application ......... 24 2.6.4. Analysis on the international application designating Japan ....... 26

CHAPTER 3. VIETNAM-ORIGINATED INTERNATIONAL APPLICATION .... 28 3.1. Minimum requirements ................................................................. 28


Final Report submitted by Nguyen Thi Ngoc Bich (VN) on March, 2008 iv

3.1.1 Entitled applicants for filing an international application .............. 28 3.1.2 Basic trademark application/registration...................................... 29 3.1.3 Marks for international application............................................... 29 3.1.4 Language .................................................................................... 30 3.1.5 Required Documents................................................................... 30

3.2. Designation .................................................................................... 31 3.3. Fees ................................................................................................ 31

3.3.1 Fees to the International Bureau ................................................. 31 3.3.2 Fee to the NOIP .......................................................................... 32

3.4. Irregularities in the international application .............................. 32 3.5. Registration, Notification and Publication .................................. 33 3.6. Refusal ........................................................................................... 33 3.7. Appeal ............................................................................................ 33 3.8. Subsequent designation ............................................................... 34 3.9. Dependence and “central attack” ................................................ 34 3.10. Post-registration procedures ....................................................... 35

CHAPTER 4. EXAMINATION OF THE INTERNATIONAL APPLICATION..... 35 4.1. Examination by International Bureau .......................................... 35

4.1.1 Receipt of application for international registration...................... 35 4.1.2. Formality check ........................................................................... 36 4.1.3. Registration and publication ........................................................ 36 4.1.4. Notify of designation to Contracting Parties ................................ 36

4.2. Examination by National Trademark Offices as designated Contracting Party in Japan and Vietnam..................................... 38

4.2.1. Competent authority .................................................................... 38 4.2.2. Substantive examination criteria .................................................. 38 4.2.3. Provisional refusal ....................................................................... 39 4.2.4. Grant of protection ....................................................................... 39 4.2.5. Other procedures......................................................................... 40

CHAPTER 5. RECOMMENDATIONS.............................................................. 44 5.1. Improvement of public awareness............................................... 44

5.1.1. Organize seminar, workshop and conference ............................. 44 5.1.2. Translate IP-related publication into Vietnamese. ....................... 45 5.1.3. Publish booklet, articles, handbook............................................. 45 5.1.4. Establish IP library....................................................................... 465.1.5. Create a professional website on Madrid .................................... 465.1.6. Improve the effectiveness of supporting programs to SMEs ..... 467

5.2. Facilitate the implementation of Madrid system......................... 47 5.2.1. Establish International Trademark Division ................................. 47 5.2.2. Elaborate Examination Guidelines .............................................. 48 5.2.3. Utilize outsource searching services ........................................... 49 5.2.4. Facilitate e-filing and e-communication ....................................... 49 5.2.5. Evaluation of implementation of Madrid System ......................... 49

REFERENCE DOCUMENTS ........................................................................... 51

ANNEX............................................................................................................. 53

JPO-sponsored Fellowship Study-cum-Research on Madrid System

1st October 2007 – 31st March 2008

CHAPTER 1. INTRODUCTION 1.1. Background The recent years show significant efforts for integration into the world economy of the Vietnam Government, especially in the intellectual property field. Along with negotiation round to be the WTO 150th 1 member , the commencement of the Law on Intellectual Property2, accession into the Madrid Protocol in relation to international registration of trademark3 mark a step forward in the Vietnam Intellectual Property development. For integration into the world economy, Vietnamese small and medium enterprises (SMEs) become conscious of importance and requirement on formulating and protecting a legitimate and sustainable image for their prestigious goods/services in both local and foreign markets. In this manner, trademark is frequently used as one of the key components in the marketing strategy of every SME for commercialization of their products/services and therefore, for maintenance of their competitiveness in the international market. Shifting from simply doing outworks for foreign companies4, Vietnamese started building their own brand with the aim to be equivalent to the foreign companies5. The topic on trademark registration and protection in Vietnam and abroad become a hot issue ever before.

Foreigners

Vietnamese

0

5000

10000

15000

20000

25000

30000

Vietnamese 3483 3095 6560 8599 10641 12884 16071 19653

Foreigners 2399 3250 2258 3536 4275 5134 6987 7457

2000 2001 2002 2003 2004 2005 2006 2007

Final Report submitted by Nguyen Thi Ngoc Bich (VN) on March, 2008 Page

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Figure 1. Trademark applications filed directly to NOIP ( 2000 – 2007) (Source: NOIP)

1 th Vietnam has been official accepted by the WTO’s General Council on November 7 2006 and became the 150th th member of WTO on January 11 , 2007

2 st Law on Intellectual Property comes into force from July 1 , 2006. 3 The date of accession is July 2006 4 According to Trade Promotion Department (the Ministry of Trade), above 95% of exported

shoes processed by Vietnamese enterprises bears the foreign licensors’ marks like Nike, Adidas, Famous Footwear, K, Shoes... or no label or marks. Source: VN Economy November 29, 2005.

5 The turnover of the An Phuoc garment company for its one own branded shirt is VND 800.000 – 1.000.000 while the price for processing the same shirt under the licensor’s trademark is only VND 10.000. Mr. Hoang Van Dung, Vice Chairman of Vietnam Chamber of Commerce and Industry (VCCCI), “Exportation to ASEAN countries – Vietnam just does outwork” – ASEAN 100 Businesses Forum, August 24, 2007.



The number of domestic trademark applications filed by the Vietnamese applicants in 2006 is 16071, increased by 25% in comparison with the year 2005. In 2007, the number of Vietnamese trademark applications comprises 19653 of total 27110 applications filed directly at NOIP6, increased by 17% in comparison to 2006. Specifically, the number of trademark applications filed by Vietnamese applicants in 2007 comprises 72% of total trademark applications filed at the National Office of Intellectual Property (NOIP) while that percentage was only 44% in 1998.

National TM application in 2007

72%


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National TM applications in 1998

44%

VN-eseForeigners

Figure 2. Tendency in national trademark application in Vietnam in 1998 and 2007 (Source: NOIP)

Demand on oversea trademark registration and protection of the Vietnamese SMEs has been increased by the requirements on launching their goods/services into foreign markets and also resulted from the practices they challenged with in some target countries where Vietnamese SMEs suffered with losing their brand and/or faced at many difficulties for claiming their own trademark back in USA, China, Singapore and some other ASEAN countries7. According to NOIP, there are about 1.000 Vietnamese trademarks registered abroad among hundred thousand Vietnamese brands created nowadays 8 . Currently, almost Vietnamese SMEs follow national route to register their trademark abroad, i.e. they seek for the trademark registration in foreign countries by filing national trademark application at the local trademark office. Being a member of the Madrid Agreement in relation to international registration of trademark for past decades9, Vietnamese applicants seem to be indifferent to this system. There was only 10710 international registration originated from Vietnam under Madrid system as of the end of 2005, i.e. a half year before Vietnam’s accession into the Madrid Protocol. While the number of international registration with Vietnam designation, for the same time, counted upto 52206

6 NOIP’s 2007 Annual Report 7 The Director of Ben Tre Coconut Confectionery Manufacturer should go to China to claim

his trademark back due to a nasty trick of his trading partner to register trademark without his authorization. A recently emerging coffee brand Trung Nguyen faced at similar situation while its leaders should persist prolonged and complicated suits in USA for demanding its legitimate ownership over its coffee brand. The Vietnamese well-known brand Vinataba should suffer heavy losses under abuse arrogation in twelve different countries while the success for reclaiming trademark back is obtained only in one country. “Losing soul, the business is to be perished”, HATRADE www.hatrade.com, December 17, 2007

8 www.hatrade.com, December 17, 2007. 9 Vietnam has been a member of Madrid Agreement since March 8, 1949 10 WIPO statistic 2005

http://www.hatrade.com/




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(the number for the year 2005 is 263911). These statistics show the fact that the number of international trademark originated from Vietnam comprises a very small amount in comparison to that designated into Vietnam. With the aim to assist Vietnamese SMEs to be benefit from the cost-effective and time-saving trademark registration abroad by using Madrid System for international registration of trademark, this research is carried out under the sponsor and support from the Japan Patent Office (JPO), the National Office of Intellectual Property, Asia-Pacific Industrial Property Center (APIC) under Japan Institute of Invention and Innovation (JIII), Vietnam Intellectual Property Institute (VIPI) and other organizations. 1.2. Objectives In the framework of this research, it is proposed to study on the international registration of trademark under Madrid system with the Vietnamese approach with the aim to provide necessary assistance to the Vietnamese small and medium enterprises to understand “rightly and fully” and to be able to effectively use the Madrid system for registration of their trademark abroad. Comparative studies on the implementing registration and protection of international trademark registration in Vietnam and Japan and case studies on effectiveness of the Madrid system in Japanese industries will give a general and systematic overview on this issue. On this basis, hopefully, the appropriate recommendation for enhancing the current legal regulations and trademark examination guidance in Vietnam will be put forward with the purpose of creating more favorable environment for encouraging foreign investment and improving the national prestige of Vietnam in the enforcement of intellectual property rights in accordance with the international standards and practice. 1.3. Scope of research With the above mentioned target objectives, this research focuses on principal information on the Madrid system, use of this system for registering Vietnamese trademarks in foreign countries, the benefits and practices for Vietnamese SMEs, difference on the international registration of trademark under the Madrid Protocol and Madrid Agreement. This research comprises a sufficient part of Japanese practice on the implementation of international registration of trademark under Madrid Protocol as a model for Vietnam to follow and learn experience. This research desires to make necessary suggestions for effective and continuous dissemination of guidance of international registration of trademark under Madrid Agreement and Protocol; updated information about the Madrid system and also spread of IP knowledge and practice in general for Vietnamese SMEs and IP community. 11 WIPO statistic 2005




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Also, this research puts forwards recommendations that may be useful for improving the effectiveness of implementing Madrid system in Vietnam, especially in regard to examination of international registration of trademark in Vietnam. 1.4. Methodology Firstly, a certain period of time is reserved for collecting general information and statistical figures on the Madrid system and those on international registration of trademark in Japan and Vietnam, the current situation of utilization of Madrid system for international registration of trademark in Vietnam and Japan. On the gathered information and facts, relevant findings and hypothesis in relation to the Madrid system, the frequent use of system by Vietnamese users and the challenges to the national trademark office in designating countries like Vietnam will be put forward in each part of the study, It will be verified and proven by analyzing the international regulations and national legislations, articles, previous researches on Madrid system in Vietnam and other countries. Comparative analysis of trademark examination system in Vietnam and Japan, the opinion exchanged with Vietnamese IP practitioners, governmental officials, the information obtained via questionnaires and interviews with JPO’s examiners, Japanese companies and IP practitioners, including patent and trademark attorneys will be a good reference for better understanding and clarifying the findings and hypothesis. The questionnaire and interviews are designed for target group with different aspect of interest. For the government’s side, such as JPO and NOIP, the questionnaires and interviews focus on the current examination process, the strength and challenges that those offices need to face against the increase of international applications of mark and possible measures to improve the effectiveness of the prosecution of the applications from point of view of office of origin and designating offices. The questionnaires, interviews and opinion exchange with the IP practitioners, including patent and trademark attorneys, lawyers and IP trainers focus on the public awareness on the Madrid system; the supporting assistance from the professional experts to the businesses; the factors of infrequent use and possible measures to encourage industries to use such system for international protection of trademark. For the industries who is considered as the direct receivers of benefits from Madrid system, the questionnaires and interviews focus on their practice of trademark registration abroad, their knowledge and experience on using Madrid system, the problems they should face or reasons inherent them to frequently use such system for trademark registration and protection in other countries. Based on those clarified information and data, the thorough and systematic analysis will be carried out to provide principle information useful for Vietnamese applicants to obtain international registration of trademark under the Madrid system. Last, but not least, possible comments for improving public awareness on Madrid system and enhancing the effectiveness of IP dissemination among Vietnamese SMEs and recommendations on effective implementation of Madrid



system will be suggested. CHAPTER 2. OVERVIEW OF THE MADRID SYSTEM 2.1. General Information The registration of trademark abroad may be achieved through national route by filing a trademark application at the local trademark office in individual country where the business exports its goods/services into or through Madrid system by filing an international trademark application. In case of the national route, the filing requirements, examination process and registration procedures are governed by the domestic laws of individual country. Normally, the applicant should exercise the filing procedures throughout a local intellectual property agent. While a business launches its presence in several countries and wishes to register its trademark in those countries, the international registration of trademark under Madrid system seems to be the best choice. It comes to the fact that the number of Madrid’s members, including Madrid Agreement and Madrid Protocol, either exclusively or both, is increased year by year. The newest comer of the system is Madagascar12 that become to the 82nd member of Madrid Union on

Upto 2000

2000 2001 2002 2003 2004 2005 2006 2007 Total

Agreement 50 1 0 0 2 2 0 1 0 56

Protocol 41 9 5 2 5 5 1 4 3 75

Table 1. Tendency of accession to the Madrid System

Source: WIPO In 2007, the membership of the Madrid Union expanded from 80 to 81 members, following the accession of Oman. In addition, Azerbaijan and San Marino, already members of the Madrid Agreement, acceded to the Protocol, which reduced the number of Madrid Union members bound only by the Agreement to seven13. Since 2000, the new members of Madrid Agreement have been those countries who have accessed into the Madrid Protocol at the same time. The above table also shows the tendency of accession to the Madrid system of contracting members: most countries prefer Protocol than Agreement nowadays. The first hypothesis is put forward as follows: what are the advantages for trademark registration offered by the Madrid system and whether the whether there are more advantages provided by Protocol than Agreement. This hypothesis will be proved by studying the benefits of the Madrid system, requirements of international applications, advantages and possible 12 WIPO’s Information Notice No. 5/2008 13 WIPO’s Summary Report 2007.


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disadvantages as well as the difference between the Madrid Protocol to the Madrid System. Vietnam has been a member of Madrid Agreement concerning the International Registration of Mark, hereafter referred to as “the Madrid Agreement” since March 8, 1949. On July 11, 2006, Vietnam became a member of Madrid Protocol relating to the Madrid Agreement, hereafter referred to as “Madrid Protocol”. This accession gives a good opportunity for Vietnamese businesses to expand their trademark registration and protection in different countries – members of Madrid system and to reach the potential market for their goods/services over the world. The international registration of mark under Madrid Agreement and Madrid Protocol both administered by the World Intellectual Property Organization (WIPO) gives the applicant in the Madrid Union a cost-effective and time-saving opportunity to register and protect trademark in 81 countries and European Community 14 by filing an international application of trademark to the International Bureau, through the Office of Origin, in one of three prescribed languages, such as English, French or Spanish) that is subject to the payment of a certain amount of fee in Swiss France. The filing procedures should be completed at the Trademark Office of the Contracting Party that is referred to as the Office of origin through which the international application of trademark will be presented to the International Bureau of WIPO. The subsequent designation of trademark registration, renewal, assignment, etc. will be followed by a simple procedure within WIPO. 2.2. Minimum requirements of an International application 2.2.1 Applicants An applicant for international registration of trademark under Madrid System should be a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol, or who has such an establishment in, or is domiciled in, the territory of an intergovernmental organization which is a party to the Protocol, or is a national of a Member State of such an organization15. The determination who is entitled to file the international application in each Contracting Party is governed by the domestic legislation in that country. 2.2.2 Basic application and basic registration An international registration of trademark must be based on a national application (the “basic application”) where the international application is governed by exclusively by the Madrid Protocol or registration (“the basic 14 As of 28 January, 2008, there are 82 members in the Madrid Union, including European

Community 15 Article 2(1) of the Madrid Protocol




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registration”) in the Trademark Office of the Contracting Party. 2.2.3 International application of trademark An international application of trademark must be made in the prescribed form and presented to the International Bureau (IB) through the Office of Origin. In Vietnam, the Office of Origin at is NOIP in Vietnam. The international application must contain a reproduction of the mark which must be identical with that in the basic registration or basic application and a list of the goods and/or services for which protection is sought, classified in accordance with the International Classification of the Goods and Services (Nice Classification). 2.2.4 Designation An application for international registration must designate one or more Contracting Parties in which the mark is to be protected. It may not designate the Contracting Party whose Office is the Office or Origin. In other words, a Vietnamese applicant may not include Vietnam as one of its designated Contracting Parties. A Vietnamese applicant may benefit from the fact that Vietnam is a member of both Madrid Protocol and Madrid Agreement, so that the designation may be extended into all countries members of the Madrid Union regardless that countries are Contracting Parties of the Protocol or Agreement. Thus, the extension of trademark protection for SMEs is available now for their potential markets, such as China, European countries and USA. The designation of a given Contracting Party is made under Agreement or Protocol which is common to the designated Contracting Party and the Contracting Party whose Office is the Office of Origin. For example, the international applications originating from Vietnam with the designation to Japan, USA and EU will be governed by the Madrid Protocol. The applications with the designation to Egypt, Kazakhstan and Tajikistan will be governed by the Madrid Agreement. 2.2.5 “Safeguard clause” Where both Contracting Parties are party to both the Agreement and the Protocol, the designation will be governed by the Agreement. This follows from the so-called ‘safeguard” clause in accordance with the Article 9sexies of the Protocol. However, according to the recent amendment to the Article 9sexies16 , the Protocol will (as from 1st September 2008) will apply between States bound by both the Agreement and Protocol. The example for this case is designation to China, Korea and Russia. 16 Approved by the Assembly of the Madrid Union at its thirty-eighth (17th ordinary) session (24th

September to 3rd October, 2007, Geneva)




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2.2.6 Language There are three kinds of international application of trademark: • The international application governed exclusively by the Agreement, i.e. all

the designations are made under the Agreement;

• The international application governed exclusively by the Protocol, i.e. all the designation are made under the Protocol; and

• The international application governed by both the Agreement and the Protocol, i.e. some designations are made under the Agreement and some under the Protocol.

If the international application is governed exclusively by the Agreement, it must be in French. If it is governed exclusively by the Protocol or by both the Agreement and the Protocol, it may be in English, French or Spanish. The NOIP allows applicants of the international application chose English or French17 in this regard. 2.2.7 Priority claimed Priority of an earlier filing may be claimed under Article 4 of the Paris Convention provided that such claim is requested and the date of the international application is not later than six months after the earlier filing18. 2.2.8 Fees The international application is subject to the payment of the following fees: • Basic fee (the basic fee for black-white mark is 653 Swiss francs, and that

for color mark is 903 Swiss Francs);

• Supplementary fee for each class of goods/services beyond three classes (this fee is 73 Swiss Francs);

• Complementary fee for the designation of each designated Contracting Party for which no individual fee is payable (this fee is 73 Swiss Francs);

• Individual fee19 for the designation of each designated Contracting Party for which individual fee is payable.

The require fees may be paid direct to the International Bureau or through the Office of Origin whether such office accepts to collect and forward such fees. 17 Circular No. 01/2007/TT-BKHCN dated 14th February 2007, Vietnam 18 Common regulations, rule 14(2)(i) 19 The individual fee vary widely and tend to encompass both the complementary and

supplementary fees in that each contracting party charges a certain fee for the first class and then an additional fee for each additional class



2.3. General Procedure The following flowchart outlines the various steps that must be taken for an international registration of trademark under Madrid system in general.


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Figure 3. Procedure of International Application of Trademark under Madrid System




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2.3.1 Filing international application of trademark An international application of trademark should be present by the applicant or his authorized representative to the International Bureau through the Office of Origin. If the application is presented directly to the International Bureau, it will not be considered as such and will be returned to the sender. 2.3.2 Check for minimum requirements by the Office of Origin The Office of Origin will check whether the filed application satisfies the minimum requirements of an international application, including the conformity of the filed international application to the basic application or basic registration in regard to the applicant’s name; reproduction of the mark; color of mark; goods/services and designation, etc. After preliminary check, if there is any insufficiency, the Office of Origin will require the applicant to correct it. The Office of Origin may also require the applicant to pay the national fee, at its own discretion, apart from the international fee that should be paid by the applicant to the International Bureau, directly or through the Office of Origin as prescribed in the legislation of each Contracting Party. 2.3.3 Certify the date of International Application and conformity to the basic

application/registration by the Office of Origin If an international application is deemed appropriate, the Office of Origin will certify that the particulars appearing in the international application correspond to the particulars appearing, at the time of the certification, in the basic application or basic registration20. The Office of Origin will also certify the date on which it receives the International Application. This date will be considered as the date of the International application provided that the subject application reaches the International Bureau within 2 months counted from the date of receipt by the Office of Origin. If the International Bureau does not receive the document within 2 months as from the date of receipt by the Office of Origin, the date of the International application will be the date on which the IB receives the application. 2.3.4 Transfer of the International Application to the International Bureau by the

Office of Origin The International Application may be sent by the Office of Origin to the International Bureau by facsimile, ordinary mail or electronic means agreed upon between the International Bureau and the Office concerned21. Where the international application is transferred by the Office of Origin to the 20 Article 3(1), Madrid Protocol 21 Party Three, Administrative Instruction for the Application of the Madrid Agreement

Concerning the International Registration of Marks and the Protocol relating thereto.




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International Bureau by telefacsimile, the original of the page of the official form bearing the reproduction of the mark, signed by the Office of Origin and containing sufficient indications to allow identification of the International Application to which it relates should be sent to the International Bureau. 2.3.5 Formality check by the International Bureau Upon receiving the international application, the International Bureau determines whether the filing requirements are met and whether the listed goods/services are properly classified, whether necessary fees have been properly been paid, etc. The Office of Origin and the applicant are informed of any irregularities that must be remedied within three months. Otherwise, the international application will be considered abandoned. 2.3.6 Registration and Publication by the International Bureau If the international application complies with the applicable requirements, the mark is recorded in the International Register. The International Bureau shall notify the international registration to the Office of the designated Contracting Parties and inform the Office of Origin accordingly and send a certificate to the holder22. In 2007, there are 38,471 marks registered in the International Register23. It should be noted that the phrase “international registration” is not a registration in the same sense as a national trademark registration in any Contracting Parties. Instead, the holder of an international registration gains the right to apply for registration in Contracting Parties. This right survives even if a designated Contracting Party refuses registration. If the holder of the international registration designates, for examples, China, Japan and Korea, and China and Japan grant an extension of protection but Korea does not, the international registration continues in force24. The registered marks shall be published in the WIPO Gazette of International Marks25. The information of registered marks is also entered in the electronic database, called ROMARIN accessible to public free of charge on WIPO’s website: http://www.wipo.int/madrid/en/romarin/. 2.4. Advantage and Disadvantage of the Madrid System 2.4.1 Advantages International registration of trademark under Madrid system has advantages for both the trademark owners and trademark offices.

22 Rule 14, Common Regulations 23 WIPO statistics 2007 at www.wipo.int 24 The Madrid Protocol: A slumbering Giant Awakens At Last, Jerome Gilson & Anne Gilson

Lalonde, APIC library 25 Article 3 (4), Madrid Protocol

http://www.wipo.int/




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The main advantages for trademark owners consist of the simplicity of the international registration system and the financial savings made when obtaining and maintaining the protection of their trademark abroad. The trademark owner need only file a single application in one language and pay fees in one currency to one office, and the registration may be renewed every ten years in a single transaction, recordal of change may be dealt with in a single transaction. It may allow businesses to remain competitive in the international market place without having to spend much time and money filing and following up separate trademark applications in different countries. The filing fees, translation expenses, renewal fees, recordal and changes, assignment and local legal fees, therefore, may be reduced and/or omitted. Besides, the holder of an international registration does not have to wait indefinitely to find out if its mark will be registered in the Contracting Parties it designated, but knows that if there is no refusal or notification of refusal within the applicable time limit (within 12 or 18 months), the mark is protected, saying: “NO NEWS IS GOOD NEWS”. The trademark offices in contracting countries are also benefit from the Madrid system. They do not need to examine for compliance with formal requirements, or classify the goods or services, or publish the trademarks. If a trademark satisfies all protection criteria, the trademark offices do not need to waste time to issue the Notification of acceptance for granting certificates and/or issue the National Certificate of trademark registration, if they like to do so. It can reduce the backlog of pending applications that every trademark offices should face to nowadays. Moreover, part of the fees collected by the International Bureau is transferred to the Contracting Parties in which protection is sought. 2.4.2 Disadvantages However, both trademark owners and trademark offices should also challenge to disadvantages of Madrid system. From the trademark owners’ side, there are following potential drawbacks of using the Madrid system: - As it’s easy to apply for international registration in other countries without

knowing local standards or searching local marks through early consultancy by local IP attorneys, it makes the trademark owners more difficult to address potential problems later. Besides, the trademark search at WIPO’s website does not allow to conduct searching trademark-in-part that makes the evaluation on the registrability of the mark based on the criteria of confusingly similarity more difficult to the trademark owners.

- The dependence of home registration for a period of five years sometimes puts the trademark owners in difficulty to seek for protection in the contracting parties while the transformation into national application is available within three months of the date of cancellation of the international registration, especially in the case the refusal, withdrawal or cancellation of




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the basic application or basic registration is subject for re-consideration.

For Vietnamese trademark owners, the dependency of basic application or registration makes more disadvantages for Vietnamese applicants in relation to the list of goods/services while class heading is not acceptable and it’s compulsory to list a detailed (somehow narrow) description of goods or services (for calculating the official fees for national application and/or classification of un-coded goods/services), the scope of coverage for the VN-originating international registration will, therefore, also be limited. In some cases, filing applications directly in other countries could result in broader protection than filing a Vietnam-originating international application.

In turn, foreign applicants to make broad claims of coverage (class headings are acceptable for international applications originated from other countries). In such context, Vietnamese trademark owners are at a disadvantage compared with foreigner trademark owners.

- Restriction of amendment and assignment is also one of disadvantages for

trademark owners. While the amendment to trademarks is available for Vietnamese basic application/registration in some certain circumstances provided that the amendment does not cause any substantive change of the mark, such equivalent amendment is not permitted in an international registration that may cause inconsistence between the international registration and basic application/registration. Also the change in the ownership of an international registration is permitted if the transferee is a person who is entitled to file an international application26.

From the trademark offices’ side, there are following problems to challenge with the international registration of trademark under Madrid system: - Madrid system may flood trademark offices with foreign applications

requiring the substantive examination in a strict limited time that may create a substantial burden for trademark examiners while the growth of the number of examiners and their capabilities hardly keep pace the increase of large volume of international applications, especially in that countries where the supporting examination facilities, such as automation system and outsourcing trademark search, etc. are not well-operated or not available.

- Acting as office of origin, trademark offices faces also to processing with filing

procedures of international applications in a strict limited time, including checking, certifying and transferring to the International Bureau as the number of international applications filed by the domestic applicants are to be increased nowadays. There are a lot of works to do for trademark offices, including the Vietnam’s National Office of Intellectual Property (NOIP) where the detailed guidance on implementation of Madrid System and guidelines on dealing with international applications originating from those countries are not available.

26 Guide to the International Registration of Marks




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2.5. Difference between Madrid Agreement and Madrid Protocol The Madrid Agreement and the Madrid Protocol are independent, parallel treaties, with separate, but overlapping, regulations and memberships. There is a certain difference between two these treaties in the following aspects:

2.5.1 Basic of an international registration: The Madrid Agreement requires that an international application be based on a home country registration27. This restriction is felt to disadvantage the trademark owners because it takes a certain period of time to obtain a registration in the home country. Under the Protocol, the applicant may base its application for international registration on an application filed with the home country’s trademark office or a registration granted by that office28. This change will also allow those who apply under the Protocol to take advantage of the six-month priority period of the Paris Convention. 2.5.2 Filing language Under the Agreement, the working language is French and all applications filed under the Agreement must be in French29. However, under the Protocol, the Office of Origin may require applications made under the Protocol to be filed in English, French or Spanish or it may permit the applicant to choose one of the three30.

2.5.3 Safeguard clause The “safeguard clause” as regulated in the Article 9sexies of the Protocol provides the answer to the question of which treaty will be binding between contracting parties to both the Agreement and the Protocol. This is one of the main new features of the Protocol in comparison to the Agreement.

2.5.4 Remedy to central attack Under the Madrid Agreement, “central attack” may occur during the first five years of an international registration as follows: Where the basic application or basic registration has its scope of protection limited or eliminated during that time, under the Agreement, the international extension registration were similarly limited or eliminated and there was no recourse for the owner of the international registration 31 . The Madrid Agreement’s “central attach” provisions are considered unfair by many trademark owners because many of the grounds available to reject, oppose or move to cancel a domestic registration are not recognized in other countries. 27 Article 3(1) of the Madrid Agreement 28 Article 2(1) of the Madrid Protocol 29 Common Regulations under the Madrid Agreement Concerning the International Registration

of Marks and the Protocol Relating to the Agreement (hereafter “Common Regulations”), Rule 6(1)(a)

30 Common Regulations, Rule 6(1)(b) 31 Article 6(3) of the Madrid Agreement




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However, under the Protocol, when an international registration is canceled during its first five years due to failure of the basic application or basic registration, the international registration may be transformed into national (or regional) applications in each of the Contracting Parties in which the international registration had effect, maintaining the priority date of the international registration32. This possibility does not exist under the Madrid Agreement.

2.5.5 Time limit for refusal period The time limit for a designated country to refuse an extension of protection under the Agreement is 12 months that is inadequate given the relatively extensive and lengthy examination process followed in many countries. However, under the Protocol, each Contracting Party may elect a period of 18 months to grant or refuse protection to the mark or notify the holder of the possibility of refusal33. 2.5.6 Validity A registration under the Agreement lasts for 20 years before it must be renewed34, while under the Protocol a registration lasts for 10 years before it must be renewed35. The shorter time period should eliminate deadwood on the International Register.

2.5.7 Fee structure. Under the Agreement, the applicant pays a fixed fee for each designated Contracting Party36. However, under the Protocol, there may be either a fixed fee or the Contracting Party may set up its own “individual” fee system in which the national office may charge the same fee for any extension of an international registration in its territory that it would have charged for a national ten-year registration37. This change means that designations under the Protocol will likely be more expensive than those under the Agreement, though still less than obtaining registration from individual countries, especially if the user does not incur local agent’s charges.

2.5.8 Flexibility for choice of Office of Origin Under the Agreement, an applicant has less choice over the trademark office in which it must file: It may only file in a contracting country to the Agreement in which it has “a real and effective industrial or commercial establishment”. Only if it has so such establishment may it file in the Office in the country of its domicile

32 Article 9quinquies of the Madrid Protocol 33 Article 5(2) of the Madrid Protocol 34 Article 6(1), 7(1) of the Madrid Agreement 35 Article 6(1), 7(1) of the Madrid Protocol 36 Article 8(2)(c) of the Madrid Agreement 37 Article 8(7) of the Madrid Protocol



if that country is party to the Agreement or, if it has no domicile in such a country, then it may file in a country party to the Agreement where it is a national38.

However, under the Protocol, the applicant may choose its Office of Origin bases on establishment, domicile or origin39. 2.5.9 Memberships In the past five years, 19 new members have joined the Madrid Protocol – most recently Madagascar, on January 28, 2008. Resulted from the fact that membership of the Protocol expands to the intergovernmental organization 40 , the accession of European Union to the Madrid system as from October 1st, 2004 open a big chance for the trademark holders of contracting parties to the Protocol to extent protection of their trademark in European countries. This ability is not provided to contracting parties only to the Madrid Agreement.

Below table indicates briefly the above-mentioned difference.

Criteria Madrid Agreement Madrid Protocol

Basic of international registration

Trademark registration in the Office of Origin

Trademark application filed at the Office of Origin

Filing language French English, French or Spanish

Safeguard clause No established Established

Remedy to central attack Not applicable Applicable 41Refusal period 12 months 18 months

Validity period 20 years 10 years

Fee structure fixed fee fixed fee or individual fees

Flexibility for choice of Office of Origin

Conditional requirement

Flexible for applicants

Membership Contracting States Contracting States and Contracting Organizations

Table 2. Difference between the Madrid Protocol and Madrid Agreement

2.6. Comparative analysis on the current situation of using Madrid 38 Article 1(3) of the Madrid Agreement 39 Article 2(1) of the Madrid Protocol 40 Article 14 (1) of the Madrid Protocol 41 Japan and USA have declared that the time limit to notify a refusal of protection shall be 18

months and that, where a refusal of protection results from an opposition to the granting of protection, such refusal may be notified after the expiry of the 18–month time limit in pursuant to the Article 5(2) of the Madrid Protocol


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system in Vietnam and Japan

2.6.1. Analysis on the Vietnam-originating International application

Before 2000 2001 2002 2003 2004 2005 2006 2007 Total

Agreement 22 1 6 15 25 14 23 29 8 143

Protocol - - - - - - - 2 10 12

Both treaties - - - - - - - - 9 9

Total 22 1 6 15 25 14 23 31 27 164

Table 3. International registrations of trademark originated from Vietnam (Source: WIPO (upto 2006), NOIP (2007))

The above-mentioned statistics shown low rate of use of Madrid system, especially in relation to Madrid Agreement, for protection of trademark abroad by Vietnamese trademark holders. It may be caused by the fact that domestic applicants in less-developed countries like VN reserve to use international registration system. The hypothesis is that there are factors inherent Vietnamese users to utilize Madrid system. If those factors can be identified, what are the possible measures to encourage Vietnamese to use this system for registration of their trademarks abroad effectively. The answers to the above questions have been found by the researcher through exchanging the opinions with the Vietnamese IP practitioners and businesses and analyzing the trend to register trademarks as follows:

Factors associated with the Madrid system

- Precondition of the international trademark application under Madrid

Agreement: One of the basic requirements for filing an international application of trademark under Madrid Agreement is having a mark registered in the country of origin. The tiring wait for examination process in the country of origin until trademark registration somehow discourages the applicant’s desire to extent the protection of trademark worldwide. Besides, under Madrid Agreement, the trademark holder seems not to have any chances to claim priority date under Paris Convention as the examination time for a domestic trademark application is always longer than 6 months.

- The target countries, in which Vietnamese trademark holder are

interested, such as European countries, USA and Japan are not party to the Madrid Agreement. While the major markets for Vietnamese manufacturers and exporters are European countries, USA and Japan, those countries are not contracting party of Madrid Agreement.




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Factors inherent to Vietnamese users

- The demand on world-wide protection of own trademark among

Vietnamese users is low For decades under central-oriented economy, the concept of trademark registration and protection seems to be strange to Vietnamese people. Phenomenon of providing goods and services under licensed/non-licensed foreign trademarks became widespread among Vietnamese manufacturers and exporters in 1990ies. Doing outwork for foreign brand could help Vietnamese enterprises, especially textile and shoe manufacturing businesses, to occupy thousand of hands and get benefit in the booming market economy42. Integration into WTO and international economy open new route for Vietnamese businesses to be the master, but not “live hand to mouth” by processing products in the other’s order. It’s time for Vietnamese users to think about registration and protection of their own mark, not only in the domestic market, but also in the foreign countries.

- Users lack sufficient knowledge and experience concerning the

procedure

Although there are meetings and seminars on the Madrid system held by Vietnam National Office of Intellectual Property (NOIP) and other professional organizations, such as Vietnam Intellectual Property Association (VIPA), Vietnam Chamber of Commerce (VCCI), Vietnam Intellectual Property Institute (VIPI), etc. in which only explanation of the system is provided, Vietnamese users still lack sufficient knowledge and experience concerning the detailed procedure for international registration, examples of notices that they may receive from the International Bureau or Office of designated Contracting Parties after filing international applications, examples of possible response and successful cases of international. Vietnamese users, therefore, hesitate to use Madrid system.

- The filing cost per application is high

While almost Vietnamese users of Madrid system are SMEs for which the filing fees for trademark registration abroad are considered as a big amount of money for uncertain successful business in the future and the application is usually made in single class and designated into one or two contracting parties, the basic fees for an international application that is calculated on the basis for three first class is very high43.

42 Above 95% of Vietnamese exported shoes are under foreign partners’ marks, such as Nike,

Adidas, Famous Footwear, K Shoes, etc. or unbranded (VN economy, 29 November 2005) 43 The minimum basic fee, excluding the complementary fee for the designation of each

designated Contracting State of SF 653 that is equivalent to about VND 10 million or 4 tons



In addition, the mode of payment, procedure for transfer money abroad and fee for transmitting official fees to the International Bureau from Vietnam is also assumable factors for the infrequent use of the Madrid system.

Entering into new millennium, the more aware of importance of trademark right for commercialization of their products/services, the better understanding of necessity for protection of trademark. Vietnamese users become familiar and frequent to the Madrid system for registration and protection of their trademark worldwide.

The number of Vietnam-originated international registration of trademark for last five years comprises nearly 80% of total Vietnamese trademarks registered under Madrid system44.

20029%

200315%

20049%

200514%

200619%

200716%

Fr 1949 to 2001

18%


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Figure 4. VN-originated international registration of trademark (1949 – 2007) – Source: WIPO (upto 2006), NOIP (2007)

The accession into Madrid Protocol that has many advantages to the Madrid Agreement may give a chance for Vietnamese to overcome the above-mentioned inherent obstacles for effective use of this system for following reasons: - As soon as filing a domestic application, Vietnamese users may file

international application with possibility to claim priority date under Paris convention;

of rice

44 Source: Madrid Express Database, WIPO website



- Almost big potential markets in which Vietnamese users are interested in, including European countries, Japan and USA are contracting parties of the Madrid Protocol;

- The demand on trademark registration and protection in foreign countries is

rapidly increased among Vietnamese users while their products/services are expanded worldwide;

- Awareness on Madrid system and filing procedures is improved although the

detailed guidance on filing procedure and practical experience of examination process require further continuous support from the government, professional association and IP practitioners;

- The filing cost is recognized as a reasonable investment contribution for

successful business in the future, especially when the need for trademark registration is extended into different contracting parties, but not limited to one or two countries.

The following charts of VN-originating international trademark applications in 2006 and 2007 show the trend of preferred use of Madrid Protocol by Vietnamese trademark holders.


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2007

30%

37%

33%

Agreement Protocol Both treaties

2006

78%

22% 0%

Agreement Protocol Both treaties

Figure 5. Tendency of preferred use of Madrid Protocol by Vietnamese users (2006 – 2007)

Source: WIPO (2006), NOIP (2007) 2.6.2. Analysis on the International application designating Vietnam In 2007, NOIP in total received 32030 trademark applications, in which 27110 were national applications and 4920 international applications.



0

5000

10000

15000

20000

25000

30000

35000

Directly f iled at NOIP Through IB

Through IB 2305 2416 1926 2058 2254 2639 3074 4920

Directly f iled at NOIP 5882 6345 8818 12135 14916 18018 23058 27110

2000 2001 2002 2003 2004 2005 2006 2007

Figure 6. Trademark applications in Vietnam from 2000 to 2007

Source: NOIP The tendency of international application of trademark both designating and subsequently designating to Vietnam is shown in below chart.

0

500

1000

1500

2000

2500

3000

3500

4000

4500

Subsequent designation 271 273 244 309 377 440 543 830

Designation 2034 2143 1682 1749 1877 2199 2531 3551

2000 2001 2002 2003 2004 2005 2006 2007


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Figure 7. Int’l applications designating & subsequently designating Vietnam (2000 – 2007)

Source: WIPO

Upto February 2008, there are 58690 international applications of trademark designating to Vietnam, including 56836 applications under Madrid Agreement and 1853 applications under Madrid Protocol45. As shown in below table, the

45 Search on WIPO Romarin Database



number of international applications, both designating and subsequently designating to Vietnam from 2000 to 200746 has been rapidly increased for last five years. Especially, the total number of international applications designated to Vietnam in 2007 has been increased by 42.5% in comparison to that in 2006. Vietnam has been ranked in the first 30 most designated contracting parties in 200747.

2002 2003 2004 2005 2006 2007

Designated 1682 1749 1877 2199 2531 3551

Subsequent 244 309 377 440 543 830

Total 1926 2058 2254 2639 3074 4381

Growth (%) - 6.8 9.5 17.0 16.5 42.5

Table 4. Int’l applications designating & subsequently designating Vietnam (2002 – 2007) Source: WIPO

As result of the Vietnam’s accession into Madrid Protocol since July 2006, the number of international applications originated from Madrid Protocol’s Contracting Parties, like European Union, Japan and USA that are in list of the first 5 countries with most foreign trademark application in Vietnam48 will be certainly increased for next years. Thus, Vietnam National Office of Intellectual Property faces to increasing number of international trademark applications, especially in relation to the time limit of substantive examination. This fact requires many efforts from National Office of Intellectual Property for trademark examination and system improvement. For meeting the demand of timely and effective examination, following hypothesis is put forward: it is necessary to apply the suitable measures to ensure the effectiveness of examination process The study on the current examination situation at NOIP shows that - the substantive examination of international applications is assigned to a certain

number of experienced people among the trademark examiners who are responsible for examination of national trademark application filed directly at NOIP: there is no specialized section for handling international application;

- the examination principle is provided by the law and under-law regulations: the detailed guidance on the Madrid system, including the procedures, examination and practice are not available;

- In the examination process, the trademark examiners need to do the similar search themselves and give the evaluation on the registrability on the basis of that search results.

46 Source: WIPO’s statistics 47 WIPO Summary Report for the Year 2007 48 Top five countries of trademark holders in Vietnam are: USA, Germany, France, Switzerland

and Japan – NOIP’s statistics


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The current situation is somehow difficult to accelerate the examination process. It’s beneficial if there are supportive measures to be applied for meeting the increasing demand from the examination requirements of international applications under Madrid system. 2.6.3. Analysis on the Japan-originating international application Japan became party to the Madrid Protocol in March 2000. Before accession to Madrid Protocol, systematic revisions were made in trademark law in 1999, including various provisions for implementing the process of filing an international trademark application through Japan Patent Office (JPO). Various researches and studies on Madrid system has been carried out for clarifying advantages and disadvantages of the Madrid system and finding out the possible measure for revolving problems49, the introduction of Madrid system and filing procedures has been given by JPO and other professional organizations, training materials and handbooks on Madrid Protocol and its regulations have been published and disseminated for public awareness50.

144261 240

314

465

890938

1016

0

200

400

600

800

1000

1200

2000 2001 2002 2003 2004 2005 2006 2007


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Figure 8. International applications originating from Japan (2000 – 2007)

Source: WIPO By filing international applications under the Madrid Protocol, Japanese users can enjoy a number of advantages, such as easier preparation of documents, simpler management of rights, lower filing costs, earlier ascertainment of examination results and expansion of protection by subsequent designation. The number of international applications filed by Japanese users has been increasing. Upto February 2008, there are 4266 international applications of trademark originating from Japan51. Since the rapid increase in 2004 due to the accession of Republic of Korea, the United States and the EU to the Madrid Protocol, although the number of applications originating from Japan has been on a rise, the number of 49 IIP bulletin 1998, 1999 50 Such as APIC’s textbook “Introduction to Madrid Protocol”, etc. 51 Search on WIPO Madrid Express Database



designated states of Japan-originated international applications took a downward turn in 200652.

2377

7314

3259

6517

1834

3849

5952

0

1000

2000

3000

4000

5000

6000

7000

8000

2000 2001 2002 2003 2004 2005 2006 Figure 9. Tendency in JP-originated designation (2000 – 2007)

Source: JPO In addition, the rate of use of the Madrid Protocol has been lower than that in major European countries. There are following major factors specific to Japan for the infrequent use of the Madrid Protocol system53:

Factors associated with the Madrid Protocol system

- The central attack is a matter of deep concern for Japanese users; - Asian countries, in which Japanese users are interested, are not party to the

Madrid Protocol; - There are few countries with which trademark protection can be confirmed

before the period for notification of refusal elapses; - The basis requirements (in relation to basis application and unity of

trademark) is serving as a restraint; - It is unclear whether already owned trademark rights can be replaced with

international registrations with no problems; - The procedure for remitting the filing fee is troublesome - The filing cost per application is high.

52 JPO’s annual Report 2007 53 “Problems facing Japanese users in Using the Madrid System” by Mituhisa ANDA, IIP

Bulleting 2007


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Factors inherent to Japanese users

- Users lack sufficient knowledge and experience concerning the procedure; - Users are watching the filing trends of competitors In addition the above-mentioned issues, there are following factors found during the interview and questionnaire to Japanese industries and IP Attorneys: - Negative response to system from IP Attorneys; - Custom to follow national route and TM management portfolio. Thus, for both Vietnamese and Japanese users, there are similar major factors inherent domestic applicants to use Madrid system. The efforts from the Governments and IP practitioners are needed to clarify the specific problems and possible measures to resolve these problems to encourage users to enjoy the advantages of Madrid system to acquire and protect their trademark right over the world. Here, the hypothesis is put forward: whether Japan is a good model for Vietnamese to learn and follow in the implementing Madrid system or not. The further analysis on the current situation of international applications designating Japan, analysis on the examination of applications both originating from and designating Japan at JPO in comparison to the examination at NOIP may prove it and put forward possible measures for improving the effectiveness of the system. 2.6.4. Analysis on the international application designating Japan Upto February 2008, there are 59142 international applications of trademark designating to Japan. The total number of international applications designating Japan in 2007 has been increased by 3.8% in comparison to that in 2006. Japan has been ranked in the 6th most designated contracting parties in 200754. In compliance with Protocol implementation, JPO has established the International Trademark Application Division and the Examination Division specifically to handle Protocol applications and has improved computer system related to Protocol. As February 2008, there are 17 trademark examiners specialized in examination of international applications under Madrid Protocol.

Efforts are being made by JPO to proceed with the increased number of international applications designating Japan by improving examination efficiency through further automation of the examination process and use of private-sector capacity55.

54 WIPO Summary Report for the Year 2007 55 JPO’s annual report 2007



0

2000

4000

6000

8000

10000

12000

14000


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Sub-designation 524 694 561 677 991 874 1236 1227

Designation 2217 5037 4762 4682 6080 9230 10608 11069

2000 2001 2002 2003 2004 2005 2006 2007

Figure 10. International applications designating Japan (2000 – 2007) Source: WIPO

While the Protocol requires a defined period of no more than 18 months within which a potential refusal period must be raised or diminished by the offices of the designated contracting parties, “Japan has taken following steps to reduce the examination period less than 18 months: - Use of outsourcing, increase in the number of examiners, employment of

staff to conduct examination research and development of a computer system;

- Use regulations concerning international applications (regulations for submitting documents for applying to the international bureau for international registration from Japan;

- Use special exceptions concerning applications for international trademark registration (regulations for seeking protection of international registration where the contracting party other than Japan designates Japan;

- Use special exceptions relating so such matters as applications for trademark registration (regulations for central attacks)56.

As a result, the average first action of trademark examination has remained at less than 11 months since 2000, marking 6.5 months in 200657 while the number of classes to be examined in relation to international applications of trademark is 56 “A comparative study on trademark protection between Japan and Mongolia under the Madrid

Protocol”, by Badarch Oyuntsetsen, www.apic.jiii.or.jp, September 2007 57 JPO annual report 2007

http://www.apic.jiii.or.jp/



58rapidly increased .

8708

14586

21623

25443

1216010925

12802

11

8.8

6.56.66.46.2

11

0

5000

10000

15000

20000

25000

30000

2000 2001 2002 2003 2004 2005 20060

2

4

6

8

10

12

Applications/Classes FA period


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Figure 11. Trademark applications in Japan (2000 – 2006) and examination period (Source: JPO)

Thus, in addition to the available Trademark Examination Guidelines and Trademark Examination Manual, Formality Examination Handbook that aim to ensure the smooth administration of trademark system and to follow a certain standard in a fair and expeditious manner for the examination as well as to allow the examiner to make an independent and factual judgment of the registrability of a trademark, the promulgation of detailed regulations for implementation of Madrid system and adoption of effective IT solutions and outsourcing search are suitable measures for JPO to achieve recent development of trademark examination, including Protocol applications. CHAPTER 3. VIETNAM-ORIGINATED INTERNATIONAL APPLICATION 3.1. Minimum requirements 3.1.1 Entitled applicants for filing an international application In pursuant to the Article 2(1) of the Madrid Protocol and Article 1 (2) of the Madrid Agreement, the entitled applicants for an international application of trademark originating from Vietnam should have Vietnamese nationality or domiciliary or a real and effective industrial/commercial establishment in Vietnam. In addition to Vietnamese citizens, Vietnamese domiciles and Vietnamese businesses, including foreign-invested enterprises established under

58 th Training material, Mr. Koji FUJIMURA – JPO, 4 December 2007.




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Vietnamese legislation, there are following organizations and individuals that seem to be entitled to file an international trademark application originating from Vietnam in comparison to the Vietnam legislation on nationality59, domiciliary60 and Law on enterprises61:

- Overseas Vietnamese who legally retain his/her Vietnamese citizenship upon acquiring foreign citizenship;

- Foreigners who owns capital contribution to a Vietnamese legal entity, including company, enterprise, hospital, school, etc.;

- Foreigner who owns shares in the Vietnamese stock market; - Branch office of a foreign company.

However, the requirements on the applicants’ own products/services or legitimate trading activities as stipulated in the Article 87 (1) & (2) of the Law on Intellectual Property62 may refrain a certain number of qualified applicants for international application under Madrid system from filing application in Vietnam. The official interpretation and detailed guidance is necessary for the applicants to use Madrid system effectively. 3.1.2 Basic trademark application/registration A legitimate applicant in Vietnam who wishes to file an international registration of trademark should own a national trademark that has already been registered or has been applied for in the Vietnam’s National Office of Intellectual Property (NOIP). The question how one of the trademark co-owners of a basic application/registration can use it to file an international application while remainder(s) does not desire to follow such procedure but maintain the co-ownership of the basic application/registration is also concerned as the co-ownership over domestic trademark registration is available 63 but the demand on the international protection extension is different to individuals among those co-owners. 3.1.3 Marks for international application Because the basic mark (registered or pending) is extended to other countries, the mark in an international application originating from Vietnam should be:

- be identical to the basic mark;

59 Law on nationality 60 Law on Domicile promulgated on 29th November, 2006, effective from 1st July 2007 and

Ordinance of immigration and domicile for foreigners dated 28th April 2000, effective from 1st August 2000

61 Law on Enterprises promulgated on 29th November 2005, effective from 1st July 2006 62 Law on Intellectual Property, effective from 1st July 2006 63 Law on Intellectual Property




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- designate the same goods/services or within the scope of those designated by the basic mark.

However, there may be difference in reproduction of the colour mark in the basic application and that in the international application as it’s printed at different time and by different devices, the definition of identicalness should be also clearly clarified in the detailed guidance for easy implementation. 3.1.4 Language French is official language to file international application originating from Vietnam with designation to sole contracting parties of Madrid Agreement, i.e. no designation is made under Madrid Protocol. The English or French is alternative language for Vietnam-originating international application designating to at least one contracting party of Madrid Protocol. 3.1.5 Required Documents Following documents in prescribed forms should be submitted to the National Office of Intellectual Property (NOIP) as Office of Origin: (i) Application for international registration 64 , namely MM1 (for those

designations governed exclusively by the Madrid Agreement), MM2 (for those designations governed exclusively by the Madrid Protocol) or MM3 (for those designation governed by both the Madrid Agreement and Madrid Protocol);

(ii) Request for International registration of trademark, namely Form 06-DKQT65 that is in Vietnamese.

The above-mentioned forms should be completed electronically (except for the signature and seal, if applicable). There are following documents to be submitted along with the application as required by NOIP as Office of Origin: (i) A copy of basic application as filed or basic registration as issued; (ii) Trademark specimens (iii) Power of Attorney if the IP representative is appointed; There are possible additional documents to be filed along with the application as follows: (i) Claim of seniority (form MM17)66 when the designation to the European 64 Downloadable at WIPO’s website: www.wipo.int/madrid 65 Downloadable at NOIP’s website: www.noip.gov.vn 66 Downloadable at WIPO’s website: www.wipo.int/madrid




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Community (EC) is made and the applicant wish to claim the seniority with a previously registered trademark in EC;

(ii) Declaration of intention to use (form MM18) whether the designation to USA, Singapore, UK or Ireland is made.

3.2. Designation As required, the designation to contracting parties should be clearly identified in the application with the statement of the treaties governed, i.e. Madrid Agreement or Madrid Protocol or both. To date, the potential markets in which the Vietnamese users are interested in are member of Madrid system, in particulars: - USA, Japan, EC, Australia, Singapore, UK and Ireland are contracting

parties of Madrid Protocol; and - China, Russia, Korea, France, etc, are contracting parties of both Madrid

Agreement and Madrid Protocol. Although ASEAN countries are not member of Madrid system now, some of them are in consideration of accession to Madrid Protocol and/or Madrid Agreement in very near future. The membership of the Madrid system, especially Madrid Protocol is extended, the updated list of contracting parties67 is necessary to consulted before completing the application. 3.3. Fees It is necessary for the applicant to calculate or request NOIP to inform the total amount of prescribed fees to be paid to the International Bureau and NOIP. An international application originating from Vietnam is subject for fees to the International Bureau and Fee to the NOIP. The payment should be made simultaneously or prior to the submission of application documents to the NOIP as Office of Origin to avoid the invalidation of application. 3.3.1 Fees to the International Bureau The prescribed fees that should be paid in Swiss France to the IB by means of:

(i) debit to a current account with the IB; (ii) payment into the Swiss postal cheque amount or to any of the

specified back accounts of the IB; (iii) a banker’s cheque; or (iv) payment in cash at the IB68

67 Accessible at WIPO’s website: www.wipo.int/madrid/en/members/ 68 Administrative Instruction for the application of the Madrid Agreement concerning the



These fees are summarized in below table: Madrid Agreement

(SF) Madrid Protocol

(SF)

Basic Fee - for a mark in black-white 653 653 - for a mark in color 903 903

*Supplementary fee for each class beyond three classes

73 73

Complementary fee for the designation of each designated contracting party

73 73*

Individual Fees Not applicable Fixed by each contracting party69

Table 5. Fees for International Application to be paid to International Bureau

3.3.2 Fee to the NOIP The official fee for the procedure of international registration of trademark that is VND 1,500.000+ should be paid to NOIP by cash or bank transfer to designated bank account or by cheque. 3.4. Irregularities in the international application Any irregularities in relation to the applicant’s name, mark specimens, list of goods/services, etc as mentioned in the application as filed at NOIP, before transmitting to the IB should be remedied by the Applicant upon NOIP’s request. Any irregularities in the international application as found by IB should be remedied by the Applicant or by the NOIP as the Office of Origin. There are following irregularities found by IB that should be remedied by NOIP: - The application does not fulfill the requirements on communication with IB as

stipulated in the Administrative Instruction - The application was not presented on the prescribed form - The application contains any of the irregularities affecting the date of the

International Registration as referred to in Rule 15(1) of the Common

International Registration of Marks and the Protocol relating thereto. * If no individual fees are applied 69 The amounts of the respective individual fees are published at www.wipo.int/madrid/en/fees


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st+ Equivalent to USD94 as of 1 March 2007

http://www.wipo.int/madrid/en/fees




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Regulations - The application contain irregularities relating to the entitlement of the

applicant to file an international application - The application contains irregularities relating to the declaration by NOIP in

relation to the date of receiving application, applicant’s name, conformity of application to the basic application/registration, etc.

- The application is not signed by the NOIP - The application does not contain the date and number of the basic

application/registration - Irregularities with respect to the designation of a Protocol’s contracting party

that requires a Declaration of intention to use the mark - Irregularities with respect to the classification of goods and services - Irregularities with respect to the indication of goods and services Any irregularities others than the above-mentioned items found by IB in relation to international application should be remedied by the Applicant, including the irregularity where the fees received by IB are less than the amount required. 3.5. Registration, Notification and Publication If the international application conforms to the applicable requirements or by other words, there no irregularities found, the IB will register the mark in the International Register, publish it in the International Gazette, inform the NOIP and send a certificate to the holder. At the same time, the designation is also notified to the Contracting Parties by the International Bureau. However, the registration of the mark in the International Register should not be understood as the legitimate trademark protection in the Contracting Parties. The confirmative acceptance for trademark protection in each jurisdiction will be available if there is no refusal issued by the concerned Contracting Parties within time limit (12 months or 18 months in accordance with the statement of each party upon its accession to the Madrid system). 3.6. Refusal Each designated Contracting Party has the right to refuse the protection of the international registration in its territory. The time limit for the Contracting Party to notify the IB, and through it to the holder of international application, of the refusal is 12 month or 18 months if that Contracting Party70 wishes to do so. 3.7. Appeal Where the Vietnamese holder of an international registration receives, through IB, a notification of refusal from any Contracting Parties, he has the same rights 70 The updated list of Contracting Parties that have declared the time limit for refusal is available

at WIPO’s website www.wipo.int





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to file an appeal with the Office in that Contracting Parties. The same procedures as would apply to an application for registration filed with the Office of that Contracting Party will be applied to the subject International registration originating from Vietnam. For many jurisdictions, the appeal against refusal should be filed though a local Patent Attorney empowered in that Contracting Party. 3.8. Subsequent designation It is possible for Vietnamese holder of international registration to make the territorial extension subsequently or to make one or more new designations in relation to goods/services in the designated Contracting Parties by filing a subsequent designation in a prescribed form (MM4) to the International Bureau through NOIP accompanying with NOIP’s form 08-SDQT. This procedure is preferable for following cases: - the designation to a Contracting Party was not made at the time of

international application; - the mark was not protected in a given Contracting Party as a result of a final

decision of refusal, invalidation or a renunciation and, at the time of subsequent designation, the grounds for such refusal, invalidation or renunciation no longer exist;

- the mark is subject for a partial refusal of protection or a partial invalidation in a given Contracting Party.

In addition to the fees to be made to the International Bureau, a payment for handling the procedure of VND 750,00071 should be made to NOIP. The subsequent designation shall bear the date of filing the subsequent designation at NOIP provided that such subsequent designation is received by the International Bureau within two months from that date. If the subsequent designation has not been received by IB within two months, the subsequent designation shall bear the date of its receipt by the IB. 3.9. Dependence and “central attack” For the first five years from the date of the international registration, the protection in the designated contracting parties under the international registration originating from Vietnam remains absolutely dependent on the basic application filed at NOIP or the basic registration recorded at national register for a period of five year from the date on the international registration. This dependence is generally known by the term “central attack”. Any decisions on limitation, renouncement, revocation, invalidation, abandonment, etc in relation to the basic application/registration either during the that five year period or as a result of an action initiated in that period will cause the same affect to the 71 Equivalent to app. USD 47.00 with the exchange rate of February 28, 2008.




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protection in the designated contracting parties under the international registration originating from Vietnam. Then, the international registration becomes independent. However, there is a possibility for the trademark owner to transform the cancelled international applications/registration under Madrid Protocol into national/regional applications/registration by filing, within 3 months of the date of cancellation, for registration of the same mark in the designated countries that will be treated as if it had been filed on the date of the original international registration. 3.10. Post-registration procedures According to Vietnam current legislations, post-registration procedures, such as renewal, assignment, licensing, change of name/address, etc. in relation to the international registration, should be made through NOIP. The required documents, including WIPO’s prescribed forms and NOIP’s forms should be filed at NOIP and the payment for such procedures should be made to both NOIP and WIPO. Such post-registration procedures should be made with the NOIP through the local IP agent if the requester is a foreigner/foreign company who does not have legitimate existence in Vietnam at the time of filing request. CHAPTER 4. EXAMINATION OF THE INTERNATIONAL APPLICATION 4.1. Examination by International Bureau The International Bureau (IB) of the WIPO is the body to administer the Madrid system. It is responsible for international registration and related duties as well as all other administrative tasks, under or concerning the international registration of trademark under Madrid Agreement and/or Madrid Protocol. 4.1.1 Receipt of application for international registration The IB receives applications for international registration of trademark through the Offices of Origin72. The application may be addressed to the IB by mail, by telefacsimile or by electronic means in a way agreed upon between the IB and the Office concerned73. If the international application is sent to the IB by telefacsimile, the original of the page of the official form bearing the reproduction of the mark should be sent to the IB then. The IB shall promptly inform the concerned Offices of Origin of the receipt of international application by facsimile or electronic means agreed between the IB and the Offices of Origin concerned74. 72 Madrid Protocol, article 2(2) 73 Administrative Instruction, Sections 6, 8, 11. 74 Administrative Instruction, Sections 10, 11.




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4.1.2. Formality check The examination as to conformity of the international application with the applicable requirements will start (i) upon receipt of the original documents of the international application, previously sent to the IB by facsimile if such an original is received within 1 month from the date of facsimile transmission; or (ii) upon expire of the period of one moth from the date of facsimile transmission if the original of international application is not received by the International Bureau.

The International Bureau checks that the international application complies with the requirements of the Agreement or Protocol and the Common Regulations, including requirements relating to the indication of goods and services and their classification, and that the required fees have been paid.

The Office of Origin and the applicant are informed of any irregularities that must be remedied within three months, otherwise the application will be considered abandoned.

4.1.3. Registration and publication Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. A certificate of registration will be issued and transmitted to the trademark holder. By the end of 2007, there were 483,210 international trademark registrations in force in the international register. They contained some 5.4 million active designations and belonged to 159,420 different trademark holders (of which many are small and medium-sized enterprises – SMEs)75. 4.1.4. Notify of designation to Contracting Parties The International Bureau then notifies each Contracting Party in which protection has been requested. A record 370,234 new designation of Madrid Union member countries were notified in 2007, representing a 1.5% increase over 200676 and reflecting continuous efforts of the International Bureau in communication with the contracting parties. Top designated countries, for recent years, are China (with 16,676 designations), Russian Federation (with 15,455 designations), USA (with 14,618 designations), Switzerland (with 14,528 designations) and EC (with 12,744 designations). Japan ranked at the 6th place with 12,296 designations and enjoyed at 3.8% increase in such designations over 200677.

75 WIPO publication FR/2008/537, February 27, 2008 76 http://www.wipo.int/pressroom/en/articles/2008/article_0007.html 77 Search on WIPO’s website at www.wipo.int

Figure 12. International Registration of Trademark under Madrid System – Examination by International Bureau




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4.2. Examination by National Trademark Offices as designated Contracting Party in Japan and Vietnam

Each designated contracting party has the right to accept or refuse the protection of the international registration in its territory. In those countries where the trademark law is characterized by the substantive examination, like Japan and Vietnam, an international application of trademark will be subject for the substantive examination under the national law and regulations similar to that applied to the trademark applications filed directly. 4.2.1. Competent authority In Japan, the Japan Patent Office (JPO) is the competent authority to receive for designation to Japan from the IB and carry out the substantive examination over the international application of trademark to decide whether the subject mark is qualified for protection in Japan under domestic law. In Vietnam, the competent authority for this responsibility is the National Office of Intellectual Property (NOIP) under the Ministry of Science and Technology. The responsible divisions of JPO for dealing with the international trademark applications designating Japan include International Application Division and Trademark Division. The International Application takes the responsibility for substantive examination. In cases where are mark in question is judged to be identical to another trademark, and when other similar issues arise, the Trademark Examination Department may make the final judgment. At NOIP, there are following divisions responsible for international applications designating Vietnam: Trademark Division No. 1, Trademark Division No. 2 where the trademark examiners carry out the substantive examination of both international and national applications of trademark. As of March 2008, there are 7 examiners of international application among total 27 trademark examiners in Trademark Division No. 1 and 8 examiners of international application among total 28 trademark examiners in Trademark Division No. 2 of NOIP. 4.2.2. Substantive examination criteria The basic requirements for substantive examination applied to the international trademark are, in principle, are similar to that applied to the national trademark. However, in the substantive examination of international applications, in a certain contracting parties, like Japan, the classification of goods/services is also checked. Based on Article 6 of the Japanese Trademark Act, the applicant is notified of the reason(s) for refusal and asked to amend and/or delete the list of goods. In Vietnam, in relation to international application of trademark, the classification of goods/services seems not to be a reason for refusal. There are following reasons for refusal usually found in the international applications designating Japan: - Fail to satisfy the requirements for registration as specified in Article 3 of the




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Trademark Law78; - Subject for any of the reasons for unregistrability as specified in Article 4(1)

of the Trademark Law79; - Fail to satisfy the “First-to-File Rule” as specified in Article 8 of the Trademark

Law; and - Fail to fulfill the requirements stipulated in Article 6 (1)80. Similar protection criteria are provided by Vietnam IP Law that is the standard regulations for substantive examination of international applications of trademark designating Vietnam. The common reasons for refusal of international application usually raised by the trademark examiners in Vietnam are also dissatisfactory to the requirements on the distinctiveness of the mark, unity of the application and the First-to-File rule and public interest. 4.2.3. Provisional refusal Any provisional refusal must be notified to the International Bureau by JPO or NOIP as the Offices of the Contracting Parties within the time limit that is 18 months for Japan and 12 months for Vietnam. The provisional refusal is recorded in the International Register and published in the Gazette and a copy is transmitted to the holder of the international registration. In the provisional refusal, the trademark examiners should indicate the reasons for refusal and legal regulations applied. However, it is somehow difficult for the holder of international applications that is subject for refusal while in the provisional refusal written by the JPO or NOIP, only the number of article in the national legislation is quoted, but not the specific indication of the reason for refusal. In such case, in a very limited time, the holder of international application should seek for the local attorney’s consultation. The time limit for the applicant to file an appeal against the provisional refusal for international application of trademark in Japan is 90 days after a copy of the decision of refusal is delivered or is mailed to the said holder in cases where the holder of the application for international application is living abroad and he does not have a representative in Japan. The time limit to file an appeal against the provisional refusal for international application designating Vietnam is 3 months counted from the date the notification is notified by the International Bureau to the holder of international application. This time limit may be extended by filing a request for time extension at the NOIP through an authorized local IP Agent. 4.2.4. Grant of protection 78 Requirements on the distinctiveness of trademark – the researcher’s note 79 Requirements in relation to the public interest, public order or morality – the researcher’s note 80 Requirements on the unity of the application – the researcher’s note




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In Japan, where there is no reason for refusing protection, before the expiry of the applicable time limit for provisional refusal, JPO will issue a statement of grant of protection. Such statement is recorded in the International Register and published in the Gazette and a copy is transmitted to the holder of the international registration. In Vietnam, NOIP will not issue a positive decision on registration in relation to the international registration of trademark if they find no reason for refusal. The protected trademark will be published in the IP Official Gazette and recorded in the National Register. The Certificate of Trademark Registration may be issued upon the holder’s request. In both jurisdictions, Japan and Vietnam, the trademark right shall be valid for ten year from the date of international registration and may be renewed for consecutive periods of ten years. The Trademark Register based on the international registration uses the international number granted by IB and both JPO and NOIP do not give any additional number for international registration. 4.2.5. Other procedures Any procedure subsequent to the refusal, such as review, appeal or response to an opposition, is carried out directly between the holder of the international registration and the Offices of contracting parties, without any involvement on the part of the International Bureau. However, a statement should be sent to the International Bureau once all the procedures before the Offices of contracting parties have been completed, indicating that the provisional refusal is confirmed or is totally or partially withdrawn. This statement is also recorded in the International Register and published in the Gazette. Any assignment of trademark right under international registration may be made for some or all of the classes specified and for some or all of the designated contracting parties. Such assignment is effective only if the transferee is a person who is entitled to file international applications and it is recorded in the International Register. One key point is that a request for recordal of trademark assignment can be filed at trademark offices in contracting parties (and IB will record such assignment when it receives from relevant trademark offices) or directly to IB at WIPO by the Assignor, but not by the Assignee. So, for example, if the Assignee of trademark right under international registration designated to Japan and Vietnam wishes to record the assignment, it must file the request at JPO and NOIP or at the trademark office of the Assignor. Below is the general flow chart of the trademark examination carried out by the JPO and NOIP as the Offices of Origin:



Figure 13. Trademark Registration Procedure under Madrid Protocol in Japan


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Figure 14. Trademark Registration Procedure under Madrid System in Vietnam


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There are following comparative features in relation to the examination of international application of trademark by JPO and NOIP as the Office of Origin:

Japan Vietnam

First-to-file rule Yes Yes

Specific Division responsible for international application

Yes No

Special provisions in trademark law concerning international application

Yes Yes

Professional Examination Guidelines: Trademark Examination Manual; Formality Examination Handbook, Examination Guideline for Trademark

Yes No

Registration requirements on the distinctiveness Yes Yes

Registration requirements in relation to the public interest

Yes Yes

Reasons for unregistrability Yes Yes

Reasons for refusal in relation to the classification of goods/services in international application

Yes No

Time limit for Notification of provisional refusal 18 months 12 months

Requirement on local IP Agent for submitting argument, appeal, opposition and prosecution

Yes Yes

Statement of grant of protection Yes No

Certificate of Registration Yes Upon Request

Publication after registration in the official gazette Yes Yes

Time limit for opposition to a trademark registration

2 months from the

publication

Any time before

registration

Notification to the holder of international trademark application about the opposition filed by the third party

Yes No

Time limit for trial for invalidation 5 years after

registration

Any time after

registration

Trial for cancellation on non-use basis Yes Yes

Table 6. Specific features of the trademark examination in Japan and Vietnam




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CHAPTER 5. RECOMMENDATIONS For a developing country like Vietnam, to widely integrate into the world economy, the harmonization of international IP system, including implementation of Madrid system is crucial and unavoidable. Understanding thoroughly the system and disadvantages, before taking advantages of the central-filing mechanism of the Madrid System, from the side of users – trademark holder and service provider – trademark office, however, crucial to getting benefit from the international registration of trademark under Madrid Agreement and Madrid Protocol. Resulted from this study with understanding the current factors inherent Vietnamese users to utilize the Madrid system and the necessity of apply suitable measures to ensure the effective examination of international applications designating Vietnam, it is concluded that it is necessary to improve the public awareness on this system among Vietnamese as well as to strengthen the capacity of the National Office of Intellectual Property (NOIP) as the trademark office of a contacting party of Madrid system. Learning from the Japan’s experience on the implementation of Madrid Protocol, following recommendations are suggested for encouraging international applications originated from Vietnam and facilitating the examination procedure within NOIP. 5.1. Improvement of public awareness It is convinced that one of factors inherent Vietnamese users to utilize Madrid system for its international protection of trademark is lack of appropriate knowledge on procedures and practice for establishing trademark rights under international registration of trademark. Possible measures for improving the public awareness on Madrid system in particular and IP system in general by providing thorough and updated information are followings: 5.1.1. Organize seminar, workshop and conference For enhancing the effectiveness of IP-related seminar, workshop and conference, including those on Madrid system in Vietnam, there are some essential factors:

(i) the topic is the hot issue and/or common concern of the major

participants; (ii) the participants are adequate and capable to absorb the knowledge and

information delivered; (iii) the presenters are suitable and professional for convincing the audience

with their expertise and practice; (iv) the financial support is sufficient to provide the best facilities and practical

activities for participants;




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(v) organizers are prestige and professional organizations

Besides, the regular trainings on IP law and practice, including Madrid system: procedure and practice provided by professional trainers to a target group of trainees is one of the possible solutions for continuous dissemination of IP knowledge in Vietnam. The IP English training course also provides a good opportunity for students and potential IP experts to approach IP field in a long-term and sustainable manner.

5.1.2. Translate IP-related publication into Vietnamese. As it is not easy for Vietnamese users to understand thoroughly the provisions in the international treaties and regulations, WIPO’s publication and professional studies/researches relating to IP matter, especially those concerning the Madrid system that are usually in English or French, but essential for effective utilization of the system, the Vietnamese version of that documents elaborated by IP professional practitioners is the best choice for enhancing the quality and efficiency of the international trademark system. The appropriate partners for this assignment are Center for supporting SMEs under NOIP and/or the Vietnam Association of Intellectual Property (VIPA) who is capable to coordinate the most highly-expertised IP practitioners, including IP Attorneys, IP trainers and IP users, independently or in cooperation with IP-related state competent authorities. Because the translation of this documentation required high expertise and consecutive effort from IP professionals, for the purpose of dissemination of international regulations and practices, it is desirable to be supported by WIPO or trademark offices in developed countries like Japan, United States of America, European Union, etc. Of course, the financial investment and relevant support from Vietnam Government may be considered as the remarkable contribution from host country.

5.1.3. Publish booklet, articles, handbook It is useful for Vietnamese users to have detailed guidance on filing procedures, necessary actions to be taken, time limit, avoidable limitation, etc. in the form of booklet, articles and handbook. It is preferable that such guidance is made in Question-Answer type and illustrated by chart and time table for every action.

The booklet, articles and handbook on the regulation and practice of trademark protection and enforcement in contracting parties in which Vietnamese industries are interested, such as Japan, USA, Russia, EU, UK may be useful for Vietnamese users to make the extension of protection by designating those countries in the international application of trademark. The recent development of bilateral cooperation between Japan and Vietnam makes Vietnamese concern much more on the legal system and business




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practice in Japan. Thus, legal writings and professional handbooks and booklets in IP fields, such as updated patent and trademark cases, IIP bulletin, etc. that is in English are desirable publication for scholars, IP practitioners to receive regularly in order to obtain the updated information about Japan as well as share those among Vietnamese businesses who enter into Japanese market or have business relationship with Japanese industries. It is suggested for IP professional organizations or agencies, such JIII, APIC, AIPPI, JPO, etc. to provide the concerned people with those updated publication. It is also preferable to disseminate the Vietnamese version of such publication to Vietnamese IP-related research institute and industries with purpose of raising awareness on the Japanese IP system among Vietnamese users.

5.1.4. Establish IP library It’s ideal for Vietnamese researchers, IP trainers and practitioners to have an opportunity to access a systematically- and well-organized IP library like APIC at JIII. It will be useful for Vietnamese to study on the IP system, law and practice of Vietnam and other countries while it’s costly to time-consuming to obtain such information abroad. This library may provide good reference documents for universities students to write thesis on IP topics or comparative study on IP system in different countries.

It is suggested to establish such IP library within the National Office of Intellectual Property and/or any IP prestige professional organizations with support from the Government agencies, intergovernmental organizations and private sector. It will be very helpful if the bilateral or multilateral cooperation between that IP library with other IP professional libraries over the world is established and developed so that the experience on management and IP dissemination as well as the updated publication may be exchanged between those entities in order to serve Vietnamese readers more effectively.

5.1.5. Create a professional website on Madrid

A professional website on Madrid procedure and practice for Vietnamese users where trademark holders, especially SMEs can obtain knowledge on the system, procedure for filing and dealing with other transaction in relation to international registration of trademark. On this website, there will be updated information about the amendment of the system, accession to the system by new members, individual fees in the contracting parties that are considered as potential markets of Vietnamese SMEs, basic requirements on trademark protection and enforcement in the contracting parties, especially those follow the substantive examination system.

Besides, it will be helpful if there is a forum created among Vietnamese users, IP practitioners to exchange opinion on how to taking advantage of the system as well as to minimizing the potential drawbacks caused by following this




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central-filing mechanism under Madrid system. Last, but not least, the Vietnamese page of this website is one of the most important factors to make it useful for Vietnamese users. This website may be hosted by the National Office of Intellectual Property (NOIP) or any non-governmental organizations specialized in intellectual property and financed, for the initial period, by the Government and/or inter-government organization. For long-term existence, it may be supported by the contribution of Vietnamese industries, Vietnamese IP agents or self-financed. 5.1.6. Enhance the support programs to SMEs. In recent years, the support programs to SMEs have been initiated in some provinces of Vietnam. The support comprises technical and financial assistance on filing patent, industrial design and trademark application. A certain number of SMEs has benefit from this support program by obtaining a national Patent or trademark registration in Vietnam. It will be more helpful if the quality and efficiency of such support programs to SMES is expanded and enhanced with target to encourage Vietnamese users to use Madrid system for its trademark protection abroad. While the filing fees is considered as a certain amount of money for Vietnamese SMEs, the financial assistance may be helpful for businesses to extent their protection of trademark abroad by filing an international application of trademark. However, to enhance the quality and efficient of support program, it is suggested to provide SMEs with advice on the legal system, filing procedure and other necessary consultancy to identify the actual demand and necessity to expand the trademark protection in a certain contracting parties before proceeding with filing procedure. By this way, the financial support will be more effective and useful.

5.2. Facilitate the implementation of Madrid system Having a certain experience on implementing the Madrid system, especially in relation to examination of international application of trademark under Madrid Agreement, it is convincible that the National Office of Intellectual Property faces to increasing number of VN-designated application in both substantive examination process and appeal against the provisional refusal. Following recommendations are made with the purpose of enhancing the efficiency of the examination system as well as reducing workload for trademark examiners. 5.2.1. Establish International Trademark Division Currently, at NOIP, international applications of trademark are dealt by four divisions, whose responsibilities include handling with national application. In particular, (i) the registration division that is responsible for receiving applications




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and granting certificate and updating the National Register as well as other duties, such as recordal of assignment, recordal of change of name and address of the IP right owners, etc.; (ii) the trademark division No. 1 and trademark division No. 2, which are responsible for carrying out the examination of both national and international applications of trademark; and (iii) the enforcement and appeal division which is responsible for settling appeal against the provisional refusal of both national and international application. Although the requirements for trademark protection under Madrid system are same to that under national application, there are a certain characteristics of international application in relation to communication, basic requirements, language, time limit for provisional refusal, etc. For enhancing the professionality and expertise of trademark examiners as well as improving the quality and accelerate the duration of examination of international application, it is suggested to establish an International Trademark Application Division for dealing with international application of trademark under Madrid system. The trademark examiners in this Division are desirable to be specialized for international application so that the quality and efficiency of examination system may be achieved. Besides, the professional training, knowledge updating and information sharing in relation to Madrid system are provided to a certain number of examiners other than to all trademark examiners within NOIP. The expertise of the trademark examiners, by this way, may be effectively improved. Because of different requirements in relation to VN-originated international applications and VN-designated international applications, it is desirable to set up specialized group of trademark examiners responsible for (i) dealing with VN-originated international applications; (ii) handling substantive examination of VN-designated international application; and (iii) solving the appeal against provisional refusal of international registration of trademark with the purpose of ensuring the smooth operation of the system 5.2.2. Elaborate Examination Guidelines In Japan, trademark examiners use the Examination Guidelines for Trademarks and the Trademark Examination Manual in their daily examination. Such documentation provides detailed explanations of legal regulations and procedures stipulated in the Japan Trademark Law as well as includes many practical explanation on registrability and unregistrability, distinctiveness and similarity of trademark, so that it may help the trademark examiners to make independent and unprejudiced decision during the examination process. The guidelines may be made specifically in relation to the international applications originating from Vietnam and designating Vietnam separately as the trademark examiners are specialized in dealing with those applications. Besides, there would be preferred that the previous provisional refusals are collected into a handbook for trademark examiners as a reference of good




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practice for substantive examination and appeal settlement. 5.2.3. Utilize outsource searching services To date, the trademark examiners should do the search for similar trademark by themselves. It takes time and also causes the different search results they may affect the examiner’s independence in making decision on acceptance or refusal of trademark. If the trademark examiners are solely specialized in evaluating the registrability and making the decision on trademark protection, the efficiency of examination process may be enhanced. Besides, the embarrassing situation during appeal process in relation to two or more similar cases with different decision handled by different trademark examiners may be avoided. 5.2.4. Facilitate e-filing and e-communication It is a certain tiring and time-consuming work for trademark examiner to use the hard copy for examination and communication. The automation system, including e-filing and e-communication may reduce their workload. Of the total number of international application filed in 2007, 34% were transmitted to WIPO electronically (as compared to 33% in 200681). Japan also uses electronic communication for the transmission of refusals, statement of grant of protection. To generate further efficiencies of the Madrid system as well as to enhance the interaction with WIPO and the development of additional services for the benefit of the Vietnamese users, the appropriate capital and human investment should be contributed into modernize the information technology infrastructure of NOIP and facilitate e-filing and e-communication system in Vietnam. Also, e-billing (for extracts from the international register) and e-payment (for other transactions) may be developed as a tool that allow applicants and holder to monitor the status of their application, registration and communication conveyed to WIPO, NOIP under the procedures of the Madrid system. 5.2.5. Evaluation of implementation of Madrid System For ensuring the effective implementation and improving the capacity of the system, the regular evaluation of the operation is recommended to find out the potential problems to be solved and possible measures to enhance the quality and efficiency of the international trademark system. The research and study on effectiveness of utilization of Madrid system in Vietnam will be also helpful for Vietnamese users and government officials to understand the current situation, problems and challenges, possible measures and solutions for enhancing the implementation of Madrid system in Vietnam. The coordination between NOIP, research institute and professional association in joint research may give possibility to mobilize the well-equipped facilities and 81 Record Number of International Trademark Filings in 2007, www.wipo.int





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well-expertised human resource for target purposes. Finally, it is understood that there are a lot of work to make the Madrid system beneficial to Vietnamese users and Vietnamese trademark office. It requires effort and cooperation of the Government competent authorities, professional organizations and Vietnamese industries. Hopefully, understanding system thoroughly and learning experience from honorable pioneers, including Japan, the National Office of Intellectual Property may, in coordination with relevant agencies, ensure the advantageous, cost-effectives and simple procedure for international registration of trademark under Madrid system in Vietnam.




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REFERENCE DOCUMENTS Law and Regulations International treaties and regulations

o Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994).

o Paris Convention for the Protection of Industrial Property (1883) o Madrid Agreement Concerning the International Registration of Marks (1891) o Protocol Relating to the Madrid Agreement Concerning the International

Registration of Marks (1989) o Administrative Instructions (as in force on January 1, 2005) o Common Regulations under the Madrid Agreement Concerning the International

Registration of Marks and the Protocol Relating to that Agreement (April 1, 2007)

o Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (updated April 2007)

JAPAN Law & regulations o Japanese trademark law (1959) o Patent law

VIETNAM Law & regulations o Intellectual Property Law of 29 November 2005; o Civil Code of 14 June 2005; o Decree No. 103/2006/ND-CP of 22 September 2006 of Government on making

detailed provisions and providing guidelines for implementing certain Articles of the Intellectual Property Law concerning industrial property;

o Decree No. 105/2006/ND-CP of 22 September 2006 of Government on making detailed provisions and providing guidelines for implementation of certain Articles of the Law on Intellectual Property regarding Protection of Intellectual Property Rights and State management of intellectual property;

o Circular No. 01/2007/TT-BKHCN of the Ministry of Science and Technology dated 14 February 2007 providing guidelines for implementing Decree No. 103/2006/ND-CP

Web site

o Vietnam National Office of Intellectual Property, http://www.noip.gov.vn o Japan Patent Office. http://www.jpo.go.jp/ o World Intellectual Property Organization. http://www.wipo.int/ o Asia Pacific Industrial Property Center. http:// www.apic.jiii.or.jp

Articles and other documents

o Article “Madrid system on international registration of mark, Summary Report for the Year 2007”, WIPO

o Article “Record number of International Trademark Filings in 2007”, WIPO o Information Notice No. 18/2007 “Amendment to Article 9sexies to the Madrid

Protocol, to the Common Regulations under the Madrid Agreement and Protocol and to the Schedule of Fees, Annexed to the Common Regulation”, WIPO

o Japan Patent Office Annual Reports (2006, 2007).






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o Japan Patent Office Trademark Examination Manual. o Japan Patent Office Trademark Examination guidelines. o Vietnam National Office of Intellectual Property – 25 years of establishment and

development, 2007 o Industrial property textbook “Trademark” o Introduction to Madrid Protocol (Text book), APIC-JIII o “Problems facing Japanese users in Using the Madrid System” by Mituhisa

ANDA, IIP Bulleting 2007 o Training material, Mr. Koji FUJIMURA – JPO, 4th December 2007. o The Madrid Agreement concerning the International Registration of Marks and

the Protocol relating to that Agreement: Objectives, Main Features, Advantages, WIPO Publication No. 418(E) ISBN 92-805-0739-7

o Alternative trademark fling strategies regarding the Madrid Protocol, the European Union and National Offices, Oblon, Spivak, McClelland, Maier & Neustadt, http:www.oblon.com/media, January 4th, 2007

o The Madrid Protocol, Norman Rich, 03 December 2007, http://www.naturalproductsinsider.com/articles/govupdate.html;

o Essentials of Madrid Protocol Practice, Nadine H. Jacobson, Partner, Fross Zelnick Lehrman & Zissu.

o The Legal and Technical Implications of Japanese and Philippine Accession to the Madrid Protocol, Maricris Jan Tobias, 2006, www.apic.jiii.or.jp

o “Overview of Japanese Trademark Law”, Dr. Shoen Ono, 2nd edition, June, 2007 www.iip.or.jp/e/translation/ono/index.html

o THE MADRID PROTOCOL: A BRIEF PRIMER FOR U.S. TRADEMARK HOLDERS by Albert Tramposch Burns, Doane, Swecker & Mathis L.L.P., Found at www.wlf.org/upload/1203CLN Tramposch.pdf

o Essentials of Madrid Protocol Practice, Nadine H. Jacobson, www.frosszelnick.com/assets/20061017163249_5_PUBLISHED_PDF

o Madrid System and Legislative/Regulatory Requirements, Prepared by Javed Safdar Tanwiri, Senior Vice Chairman Pakistan Industrial & Intellectual Property Rights Association (PIPRA) ,WIPO NATIONAL WORKSHOP ON TRADEMARKS AND THE MADRID SYSTEM, December 4 and 5, 2006;

o “A comparative study on trademark protection between Japan and Mongolia under the Madrid Protocol” for future development of Trademark Protection in Mongolia, Ms. Badarch Oyuntsetsen, WIPO-funded researcher from Mongolia, September 2007, APIC library;

o The Madrid Protocol: A slumbering giant awakens at last, Jerome Gilson & Anne Gilson Lalonde, APIC library;

o Galicia, Ireneo, “Accession to the Madrid Protocol: Issues, Prospects, and Expectations.” Delivered during the WIPO Regional Workshop on Operationalization of the Madrid System in Developing Countries: Challenges and Benefits, Dongguang City, China, November 22-24, 2006;

o Hines, P. Jay and Weinstein, Jordan S., Using the Madrid Protocol after US Accession, 93 TMR 1003, 1023.

o Kelly, Christopher and Faunce, Marissa. The Madrid System and a Streamlined Process for Registering

http://www.naturalproductsinsider.com/articles/govupdate.html


http://www.iip.or.jp/e/translation/ono/index.html

http://www.wlf.org/upload/1203CLN%20Tramposch.pdf

http://www.frosszelnick.com/assets/20061017163249_5_PUBLISHED_PDF




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ANNEX Samples of Questionnaires

o Questionnaires to Japan Patent Office o Questionnaires to Japanese Industries o Questionnaires to Japanese IP Attorneys

Forms for International Registration of Marks

o International Application for Registration of Mark: WIPO form and NOIP’s form

o Application for recordal of change



Samples of Questionnaires

o Questionnaires to Japan Patent Office


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Questionnaires

o Questionnaires to Japanese Industries


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Questionnaires and Response

o Questionnaires to Japanese IP Attorneys


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Forms for International Registration of Marks o International Application for Registration of Mark: WIPO’s forms and

NOIP’s form


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Forms for International Registration of Marks

o Application for Subsequent Designation/Assignment/Recordal of change/Renewal: WIPO’s form and NOIP’s form


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