1. 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.

2. 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 1990. 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 economy.

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 high. 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 system.

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;

- 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. 

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For more information about Madrid trademark application in Vietnam, please do not hesitate to contact us:

HAIHAN-IP

12A Floor, Center Building Hapulico Complex, No. 1 Nguyen Huy Tuong Str., Thanh Xuan Dist., Hanoi City, Vietnam.

Tel: 8424-3202 8111 / 8424-3202 8222

Fax: 8424-3202 8333

Hotline: 84-983 788 469

Email: hh@haihan.vn

HAIHAN-IP is a registered IP Firm recorded by The National Office of Intellectual Property of Vietnam (NOIP).