1. Introduction
In the context of deepening global economic integration, the protection of intellectual property rights, particularly trademarks, has become a critical factor in promoting international trade and safeguarding business interests. The Madrid System, administered by the World Intellectual Property Organization (WIPO), is an effective tool enabling businesses to register and protect their trademarks across multiple countries and jurisdictions through a simplified and cost-effective process. As a member of the Madrid Protocol since 2006, Vietnam actively participates in this system, allowing both domestic and foreign enterprises to register international trademarks designating Vietnam. However, not all international trademark registrations (Madrid registrations) are fully accepted. A common challenge is the partial refusal of goods/services in Vietnam, posing difficulties for both applicants and authorities.
This article aims to clarify the legal procedures for handling Madrid registrations designating Vietnam that have faced partial refusal, analyzes the current practice for such refusals, and proposes potential solutions to address these challenges.
2. Legal Framework for Handling Partially Refused Madrid Registration in Vietnam
To align with the Madrid Protocol, Vietnam has enacted regulations governing the processing of Madrid registrations designated in Vietnam, facilitating international applicants in securing trademark protection. Pursuant to Article 27 of Decree No. 65/2023/ND-CP, the process for handling Madrid registrations subject to partial refusal is as follows:
Upon receiving notification from the International Bureau (IB) regarding a Madrid registration designating Vietnam, the National Office of Intellectual Property (NOIP) conducts substantive examination following the same procedures applied to national trademark application. Within 12 months from the International Bureau’s notification date, the NOIP must issue a conclusion on the trademark’s registrability.
If part or all of the designated goods/services fail to meet protection criteria, the NOIP will issue a Provisional Refusal Notification before the expiration of the 12-month period. This notification will specify the grounds for refusal and will be forwarded to the International Bureau. The applicant then has 03 months from the date of the notification to amend the registration or submit counterarguments. Two possible outcomes may follow:
(i) The amendments or counterarguments are accepted.
(ii) The amendments are inadequate, or the applicant fails to respond or provide insufficient justification.
The key distinction between these two scenarios lies in the scope of goods and services protected under the international registration in Vietnam. Obviously, if amendments or counterarguments are accepted, the applicant may secure protection for the entire designated list of goods and services in Vietnam. Conversely, the competent authority will formally refuse protection for the non-compliant portion of the list while granting protection for the remaining goods/services that meet the criteria.
Thus, regardless of whether the applicant submits amendments or counterarguments, the international trademark registration will still be protected in Vietnam for the goods/services that meet the protection criteria. Procedurally, once the scope of protection is determined, the competent authority will undertake the following steps:
(i) Issue a decision to grant protection for the international trademark in Vietnam, specifying the scope (extent) of protection corresponding to the compliant goods/services; record the registration in the National Register of Industrial Property (International Trademark Section); and transmit a statement of grant of protection to the International Bureau following the provisional refusal notification;
(ii) Publish the decision in the Official Industrial Property Gazette within 02 months from the issuance date.
Additionally, once the international trademark is accepted for protection in Vietnam, the owner may request certified copies of this international registration, subject to full payment of the applicable fee. This process ensures the applicant’s legitimate rights while enabling the authorities to effectively enforce trademark protection standards in Vietnam.
3. Common Grounds for Partial Refusal of Goods/Services
When an international trademark registration designates Vietnam, the NOIP applies domestic regulations and examination standards. Consequently, not all goods/services listed in the international registration are accepted. In many cases, while the registration may have been approved in multiple jurisdictions worldwide, it still faces partial refusal in Vietnam. Below are the primary grounds for partial refusal of goods/services:
(i) Vague or Non-Specific Descriptions
One of the most common reasons for partial refusal is insufficiently detailed or ambiguous descriptions of goods/services. This aligns with the term “too vague” frequently cited in provisional refusal notices.
Specifically, when filing a registration through the Madrid System, applicants often rely on the Nice Classification and their actual business operations to describe the list of goods/services. However, as a global standardized classification, the Nice Classification only includes lists of general and broad terms. Meanwhile, for many individuals and enterprises, when encountering situations where their goods/services are not listed in the Classification, they tend to use generic descriptions, which may fail to fully and clearly reflect the scope of protection. Vietnamese law, on the other hand, tends to require a precise and detailed list to avoid confusion or overlap with other existing trademarks.
For example, an international enterprise registers a trademark in Class 42 for “design services”. This description is deemed too broad, as it may encompass various fields such as fashion design, interior design, or software design, leading to failure to meet the protection requirements in Vietnam. Another example is the registration of a trademark for the “Chemicals” in Class 01. Without specifying the field of use or target industry, this trademark registration has been also refused protection for this product.
(ii) Conflict with Registered Trademarks prior to the Designation Date of International Registration in Vietnam
The second reason for partial refusal is conflict with previously registered trademarks, based on the first-to-file principle in intellectual property law. If the goods/services listed in the Madrid registration overlap or are similar to those covered by an earlier registered trademark in Vietnam, the conflicting portion will be refused to prevent the risk of market confusion. When assessing potential conflicts, the NOIP evaluates the degree of similarity in pronunciation, visual presentation, and conceptual meaning of the trademarks, as well as the relatedness of the goods/services.
Example: A company registers a trademark under Class 35 for “wholesale and retail services for the following products: clothing, handbags, belts, perfumes, shampoos, essential oils, soaps”. This trademark is partially refused for “wholesale and retail services: perfumes, shampoos, essential oils, bath cosmetics” due to confusing similarity to a prior trademark registered in Vietnam for “soaps, perfumes, essential oils, shampoos, hairsprays” under Class 03, which predates the international registration’s designation in Vietnam.
(iii) Non-Compliance with Legal Regulations
Certain goods or services in the registration may be refused due to incompatibility with current legal regulations or social ethical standards in Vietnam. Specifically, products or services such as unlicensed gambling, goods containing obscene content, or prohibited commercial items are at risk of refusal. Example: A trademark registration for “online betting services” under Class 41 may be refused because online gambling is not yet legalized in Vietnam. This example highlights the importance of strict compliance with legal frameworks and social values to ensure the validity of the registration process.
(to be continued…)
Tang Duc Khuong, Nguyen Thanh Phuong
