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Ms. Nguyen Thi Ngoc BICH_en_viet_ Powered By Docstoc
					JPO-sponsored Fellowship Study-cum-Research


International Trademark Registration under
  Madrid Protocol and Madrid Agreement
           Vietnam’s Approach

                          Presented by Nguyen Thi Ngoc BICH
                       Supervised by Prof. Yoshitoshi TANAKA



               Tokyo, March 2008
Contents (general)
      Introduction

      Overview of the Madrid System
      International application originated from VN

      Examination of the International Application

      Recommendation


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Contents (1): Introduction


        Reasons for this Study
        Objective
        Scope of study
        Methodology




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Why this theme?

    Essential for Vietnam SMEs
           VN’s integration into international economy
           Need to have own trademark as the
            distinctive image of goods/services
           Current situation of using Madrid Agreement
           Benefit from the cost-effective and
            time-saving trademark registration abroad




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Facts and Figures
    Madrid Members

                  Upto   2000   2001    2002    2003    2004      2005      2006     2007
                  2000

    Agreement      50     1      0        0       2       2        0          1        0

     Protocol      41     9      5        2       5       5        1          4        3


     The number of Madrid Members: increased (82 as of 28/01/2008)
     Most countries prefer Protocol than Agreement nowadays (75)

               More advantages for TM registration under Madrid System
               More advantages provided by Protocol than Agreement
JPO-Sponsored Fellowship Study       2008@ Nguyen Thi Ngoc Bich          Supported by APIC-JIII
Facts and Figures
       Int’l TM Registration in Madrid Members as countries of origin
                    2002       2003    2004     2005      2006           Date of entry
             JP      204       314     465       890       938     JP: 14/03/2000
                   No member
            US                 34      1025     2584      3296     US: 01/11/2003
            CN       219       413     803      1315      1416     CN: 01/12/1995 (4/10/1989)
                   No member
            KR                 31       81       111       191     KR: 10/4/2003
            MN        -         -        2         -        1      MN” 16/6/2001 (21/4/1985)
            VN       15        25       14        23       31      VN: 11/7/2006 (8/3/1949)
            Domestic applicants in less-developed countries like VN:
             reserved to use international registration system

           There are factors inherent Vietnamese users to use Madrid system
           What are the possible measures to encourage utilization of Madrid system for
            international registration of marks
JPO-Sponsored Fellowship Study        2008@ Nguyen Thi Ngoc Bich    Supported by APIC-JIII
Facts and Figures
   Int’l TM Registration in Madrid Members as designated countries
                2002       2003    2004     2005      2006           Date of entry
        JP      4762       4682    6080     9230     10608     JP: 14/03/2000
               No member
        US                 123     5647     10731    12697     US: 01/11/2003
        CN      6004       6217    7579     11724    13749     CN: 01/12/1995 (4/10/1989)
               No member
        KR                 1198    3973     6148      7081     KR: 10/4/2003
        MN       965       988     1057     1397      1312     MN” 16/6/2001 (21/4/1985)
        VN      1682       1749    1877     2199      2531     VN: 11/7/2006 (8/3/1949)
       National IP Offices face to the increasing number of TM
        applications: time limit, communication, etc.

            Need to apply the suitable measures to ensure the
             effectiveness of examination process


JPO-Sponsored Fellowship Study    2008@ Nguyen Thi Ngoc Bich    Supported by APIC-JIII
Facts and Figures
   VN – JP practices on Madrid system

                                                              VN             JP
     First-to-file principle                                  O             O
     Substantive Examination System                           O             O
     Prior research on Madrid system                          X             O*
     Examination guidelines                                   X             O
     Good practices                                           X             O
    * Including comparative studies covering different countries (US, PLP, MN, etc.)
    Similar IP system for TM examination/registration in VN and JP


             Japan is a good model on the implementing Madrid system
              for Vietnam to learn and follow
JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich        Supported by APIC-JIII
    Findings, Hypothesis & Study
     Domestic applicants in           NOIP faces to the            VN-JP Similarity of IP
     LDC like VN: reserved            increasing number of         system & JP’s pioneer
     to use Madrid system             TM applications              in implementation


          HYPOTHESIS:                      HYPOTHESIS:                  HYPOTHESIS:

     Factors inherent                    Need to apply               Japan – a good
      Vietnamese to use Madrid             suitable measures to         model to follow
     Possible measures to                 ensure the
      encourage utilization of             effectiveness of
      system for int’l registration        examination process


                                       Study Theme:
INTERNATIONAL REGISTRATION OF TRADEMARK UNDER MADRID SYSTEM –
    VIETNAMESE APPROACH IN COMPARATIVE STUDY WITH JAPANESE PRACTICES

    JPO-Sponsored Fellowship Study    2008@ Nguyen Thi Ngoc Bich     Supported by APIC-JIII
What’s study                                       Vietnam approach:
                                                       Easy-to understand
           Madrid System:                             Effective-to use
               Madrid Agreement
                                                FOR VIETNAMESE
               Madrid Protocol


      Vietnam approach                                       LIVE
                                                              USEFULL


       Comparative           Comment
         study              for actions            Recommendation:
                                                       Facilitate the
                                                        implementation

JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich     Supported by APIC-JIII
Methodology
COLLECT INFORMATION/STATISTICS
     Study on legislations for TM                 Collect information/statistics:
      registration and Madrid system:                  WIPO, NOIP, JPO: website,
         WIPO, JP, VN: website, laws &                 annual report
          regulation, guidelines
                                                       Other publication: books,
         Prior researches on Madrid system             magazines, newsletters, etc.
          in JP, US, CN, PLP, MN, etc.

RAISE AND PROVE HYPOTHESIS
     Comparative Analysis on                      Questionnaires, Interview
      trademark system in JP and VN                    Industries, IP attorneys, Examiners

PROVIDE INFORMATION USEFUL FOR VIETNAMESE
     Principle information                        Comments/Recommendation
         On Madrid system                             Improve public awareness
         JP practices as model                        Enhance effectiveness of system


JPO-Sponsored Fellowship Study    2008@ Nguyen Thi Ngoc Bich      Supported by APIC-JIII
Scope of study

                                      VN-
                                  originated
                                     Appl.
                Introduction



                                 Examination
                   Overview      by National       Comments/
                       on           Office
                                                      Re-
                    Madrid                        commendation
                    system




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich      Supported by APIC-JIII
Contents (2)
                                             Introduction
                                             Minimum Requirements
                                             General Procedure
                                             Advantage and
                                              Disadvantage
                                             Difference between
      Overview of                             Madrid Agreement &
     Madrid system
                                              Madrid Protocol
                                             Statistic data
                                                  Comparative analysis
                                                   (JP-VN)




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Overview of the Madrid system
   Introduction of system
       Trademark registration/protection abroad:
           National route
           International route
       VN as member of Madrid system
           Agreement: 8th March 1949
           Protocol: 11th July 2006
       WIPO as administration agency
                  82 members of Madrid system (28th January 2008)




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Overview of the Madrid system
   Minimum Requirements of Int’l application
       Applicants:
           Basic concept
           Interpretation under domestic legislation
       Basic application/registration
       Application
       Designation
       “Safeguard clause”
         Article 9sexies: Agreement

         Amendment (October 2007): Protocol (valid fr. 01/09/2008)
       Language
       Priority claims
       Fees

JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Overview of the Madrid system
   General Procedure
       Filing int’l application: via Office of Origin (OO)
       Actions by OO
           Receive of application
           Preliminary check
           Certify international date & conformity
           Transfer application
       Action by International Bureau (IB)
           Formality check
           Registration/Publication
           Notify designation


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Overview of the Madrid system
   Advantages
       Trademark owners
           Simplicity
           Financial savings
           Single transaction for post-registration procedures
           Examination: NO NEWS is GOOD NEWS
       Trademark offices
           No examination on formality; classification
           Reduce backlog of pending applications
           Fee collection from IB


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Overview of the Madrid system
   Disadvantages
       Trademark owners
           Lack of prior consultancy on local requirements
           Similarity search at WIPO website: not available
           Dependence of basic application/registration
       Trademark offices
           As designated office: increase applications, time limit,
            lack of facilities, automation system, etc. -> Substantial
            burden for examiners
           As office of origin: strict time limit, detailed guidance



JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Overview of the Madrid system
   Difference between Agreement and Protocol
       Basic requirements
       Language
       Safeguard clause
       Remedy to central attack
       Refusal period
       Validity
       Fees structure
       Flexibility for choice of OO
       Membership

JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Statistic data & comparative analysis
   VN-originated international application
     Treaties    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                 -          -          -          -      -      -          -      -      9           9

     Total           22          1              6     15 25            14       23       31     27     164

    (Source: WIPO (upto 2006), NOIP (2007)

                  Low rate of use of Madrid system by Vietnamese
JPO-Sponsored Fellowship Study             2008@ Nguyen Thi Ngoc Bich                   Supported by APIC-JIII
Statistic data & comparative analysis
   Factors of infrequent use of Madrid by VN-ese
       Factors associated with the Madrid system
           Precondition under Madrid Agreement: Basic Registration
           Memberships of Madrid Agreement: EU, JP, USA – major
            markets for VN-ese SMEs are not members
       Factor inherent to Vietnamese users
           Low demand on world-wide TM protection
           Lack of sufficient knowledge and experience on the
            Madrid procedure
           High filing cost: single class = three-classes application
           Difficulty to transfer fees abroad


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Statistic data & comparative analysis
   VN-originated international application
                                         Fr 1949
                                         to 2001
              2007                         18%
                                                                 Rate of use of
               16%                                               Madrid system
                                                                 by Vietnamese
                                                                    becomes
                                           2002
                                            9%                    INCREASED
       2006
        19%                                                        for last five
                                                                      years:
                                         2003
                                          15%                       nearly 80%
               2005
                                 2004
                14%
                                  9%

(Source: WIPO (upto 2006), NOIP (2007)

JPO-Sponsored Fellowship Study      2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Madrid Protocol – chance for VN-ese
users to overcome inherent obstacles
   Basic application: claiming priority
   TM registration in potential market: JP, USA
   Demand on protection extension in
    consistence with product/service expansion
   Support from Government, professional
    associations
   Consideration of filing cost as a reasonable
    investment to successful business

JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Statistic data & comparative analysis
   Tendency of frequent use of Madrid Protocol by VN-
    ese users (2006 – 2007)
          2006                                                 2007
                    0%
    22%
                                              33%                                    30%




                                  78%                                 37%

Agreem ent     Protocol    Both treaties       Agreem ent     Protocol   Both treaties

* Source: WIPO (2006), NOIP (2007)


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich      Supported by APIC-JIII
Statistic data & comparative analysis
   Trademark applications in Vietnam (2000 – 2007)
       In 2007: total 31994 applications (27074 national, 4920 int’l)
       Top 5 countries of TM holders: USA, DE, FR, CH & JP
   Int’l applications designating Vietnam (2000 – 2007)
       Upto Feb. 2008: total 58690 int’l applications (56836 applications
        under Agreement; 1853 applications under Protocol)
       2007: int’l applications increased by 42.5% to 2006
       Potential top countries of int’l TM holders: USA, EU, DE, CH, FR
        & JP
   Capacity at NOIP
       Examiners: responsible for both national & int’l
       Out-sourcing search: NO
       Examination Guidelines: included in the general provisions on IP


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Statistic data & comparative analysis
   Japan’s preparation for accession to Madrid Protocol
       Systematic revisions in trademark laws 1999
       Researches & studies on advantages/disadvantages of the
        system and possible measures for effective implementation
       Introduction, guidance on filing procedures by JPO, professional
        associations
       Training materials & handbooks on Madrid Protocol and its
        regulations
   Int’l applications originating from Japan (2000 – 2006)
       Upto Feb. 2008: 4266 int’l applications (2007: 1016 applications)
       Number of applications has been on a rise
       Number of designated states: took a downward



JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
 Statistic data & comparative analysis
     Factors of infrequent use of Madrid by Japanese*
         Factors associated with the Madrid system
              The central attack
              Memberships: Asian countries is concerned
              The basis requirements (basis application, TM unity): restraint
              Replacement of registered TM right by int’l Reg.: Doubt
              The procedure for remitting the filing fee: Troublesome
              The filing cost per application: High
         Factor inherent to Japanese users
              Lack of sufficient knowledge and experience on the procedure
              Watch for filing trends of competitors
              Negative response to system from IP Attorneys**
              Custom to follow national route and TM management portfolio**
* Source: “Problems facing Japanese users in using the Madrid system” Mituhisa ANDA, IIP Bulleting 2007
** From interview and questionnaire to JP-ese industries, IP attorneys

 JPO-Sponsored Fellowship Study          2008@ Nguyen Thi Ngoc Bich         Supported by APIC-JIII
Statistic data & comparative analysis
   Int’l applications designating Japan (2000 – 2007)
       Upto Feb. 2008: total 59142 int’l applications
       2007: int’l applications increased by 3.8% to 2006
       The 6th most designated country in 2007
   Capacity at JPO
       Int’l TM Application Division and Examination Division specifically
        to handle Protocol applications: established
       Computer system: improved
       Trademark examiners specialized in examination: Yes
       Out-sourcing search: Yes
       Examination Manual/Guidelines: Yes
   JPO’s effort to reduce the examination period

JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Contents (3)
                                             Minimum Requirements
                                             Contracting parties
                                             Fees structures
                                             Irregularities
                                             Subsequent designation
     VN-originated                           Dependence & “central
  Int’l TM Application                        attack”
                                             Extension for protection
                                             Refusal
                                             Opposition
                                             Post-registration


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Minimum requirements
   Applicants
       VN-ese citizen: OK
       VN-ese domiciles: OK
       VN-ese businesses: OK
       Overseas VN-ese:?                                     • Official
                                                                interpretation
       Foreigners own capital contribution
        to VN-ese entity: ?                                   • Detailed
       Foreigners own shares in the VN                         guidance
        stock market: ?
       Branch of a foreign company: ?
   Requirements of IP law on applicant’s
    own products/services or legitimate
    trading activities: refrain applicant?
JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Minimum requirements
   Basic application/registration
       Co-ownership of basic
        application/registration                        ?
       Different demand on int’l
        protection extension
   Basic mark                                                  • Official
       Requirement on identicalness                              interpretation
       Practice of amendment after
                                                       ?
                                                                • Detailed
        filing national application
                                                                  guidance
   Designated goods/services
       Requirement on detailed list in
        the national application                       ?
       No restriction in other countries
JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Minimum requirements
   Language
       Exclusively bound by Agreement                        FRENCH
       Exclusively bound by Protocol                         ENGLISH or
       Both by Agreement & Protocol                          FRENCH
   Documents
       Forms MM1; MM2 or MM3
       Form 06-DKQT in VN-ese
       Others:
           Copy of Basic application/registration
           TM specimens
           POA
           MM17 (EU), MM18 (USA, SG, UK), etc.
JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich     Supported by APIC-JIII
  Fees
        Fees to NOIP                              Fees to IB
            In VND                                    In CHF

                                                           Agreement        Protocol

Basic Fees for a mark in B-W (color)                             653             653
                                                                (903)           (903)
Supplemental Fee (per class beyond 3)                            73               73*

Complementary fee for each designation                           73               73*

Individual Fees                                                 N/A           Fixed by
                                                                              country
* If no Individual Fees are applied


  JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich      Supported by APIC-JIII
Irregularities in the int’l application
   Remedied by NOIP
       Communication
       Prescribed form
       Irregularities affecting the date of
        registration
       Irregularities on entitlement to file appl.           • Official
       Irregularities on date of receiving,                    interpretation
        conformity with the basic appl./reg.
       Classification
                                                              • Detailed
       Etc.
                                                                guidance
   Remedied by Applicant
       Fees
       Others than that remedied by NOIP

JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
VN-originated international application
   Registration, Notification, Publication
       Understanding of concept “registration”
   Refusal
   Appeal
       Through local attorney in contracting country
   Subsequent designation
       Forms MM4; 08-SDQT
       Fees: to NOIP, to IB
   Transformation the cancelled int’l application to
    national/regional application: within 3 months
   Post-registration procedures
JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Content (4)
                                             Examination by the
                                              International Bureau
                                             Examination by the
                                              National Office
  Examination of the                         Comparative study on
  Int’l TM Application
                                              the substantive
                                              examination carried
                                              out by JPO and NOIP




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Examination by International Bureau




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Examination by JPO & NOIP as
Contracting Offices
                                                              JP            VN
First-to-file rule                                            Yes           Yes
Specific Division for int’l application                       Yes           No
Special provisions on int’l application                       Yes           Yes
Professional Examination Guidelines                           Yes           No
Requirements on distinctiveness                               Yes           Yes
Registration requirements in relation                         Yes           Yes
to the public interest
Reasons for unregistrability                                  Yes           Yes

JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich    Supported by APIC-JIII
Examination by JPP & NOIP as
Contracting Offices
                                                                JP            VN
Time limit for provisional refusal                             18 m          12 m
Statement of grant of protection                               Yes            No
Local Attorney for appeal/opposition   Yes                                  Yes
Certificate of Registration            Yes                                  Alter.
                                                                             Before
Time limit for opposition            2 months                              registration

Time limit for invalidation after reg.                        5 years Any time
Cancellation on non-use basis                                   Yes     Yes

JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich      Supported by APIC-JIII
Content (5)
                                             Improvement of
                                              public awareness
                                             Facilitate the
                                              implementation of
     Recommendation
                                              Madrid system




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Improvement of public awareness

   Seminar, workshop and conference
   Translation of treaties and regulations,
    publication
   Booklet, articles, handbook
   IP library
   Website on Madrid procedure and practice
   Support programs to SMEs


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Facilitate the implementation of Madrid
system
     International Trademark Division
     Examination Guidelines and/or Madrid
      implementation rules
     Outsource searching services
     E-filing and e-communication
     Evaluation of implementation:
      problems--solutions


JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII
Acknowledgement


                          THANK YOU
                              for
                        YOUR ATTENTION!




JPO-Sponsored Fellowship Study   2008@ Nguyen Thi Ngoc Bich   Supported by APIC-JIII

				
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