Saturday, December 16, 2017

Disadvantages in filing Int’l Trademark Application under the Madrid System

Both trademark owners and Trademark Offices should also confronts with the disadvantages of Madrid system as follows:

From the trademark owners' side, there are following potential drawbacks of using the Madrid system:

    - Since it's easy to apply for Int'l Trademark 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 05 years sometimes causes difficulties to the trademark owners to seek for protection in the contracting parties while the transformation into national application is available within 03 months computed from the date of cancellation of the international registration, especially in the case the refusal, withdrawal or cancellation of 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 specify (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 application.

    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

     

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