Transformation of an international trademark registration into a national application

The international trademark registration system under the Madrid Protocol is an effective tool to help businesses register and protect trademarks in many countries through a centralized procedure. However, in some cases, international trademark owners need to transform their international registration into the form of direct filing in each country (national application) to maintain validity or due to the cancellation of global registration. In the following, Viet An Law will advise on the procedure for transforming the international registration of a trademark into a national application.

Conditions for transformation of international registration of trademarks into applications filed in national format

“Madrid Application” means an application for international registration of a trademark filed under the Madrid Agreement or under the Madrid Protocol.

In case the international registration of a trademark in Vietnam of a trademark owner being an individual or organization a member of the Madrid Protocol is invalidated under the provisions of Article 6 of the Madrid Protocol, such person may file an application for transformation to the State administrative agency for industrial property rights to register for protection of the trademark itself for part or all of goods and services on the list of goods and services which have been recorded in the international registration of trademarks but have been invalidated according to the provisions of Article 9quinquies of the Madrid Protocol.

Accordingly, the current conditions for transforming the international registration of a trademark into a national application for the Madrid application are specified in Clause 1, Article 28 of Decree 65/2023/ND-CP as follows:

• The application is filed within 03 months from the date of recording in the International Register the corresponding international registration invalid;
• International registration has never been the subject of rejection, termination or cancellation in its entirety in Vietnam;
• The application is made according to Form No. 03 in Appendix II of Decree 65/2023/ND-CP (in which the list of goods and services in Vietnamese in the transformation application must be smaller than or equal to the list of goods and services invalidated in the corresponding international registration);
• The application satisfies all other formal requirements for a trademark registration application in accordance with Vietnamese law;
• The applicant shall pay all fees and charges as prescribed for trademark registration applications filed in the national format, except for cases where trademark registration applications have been transformed from international registration that have been accepted for protection in Vietnam.

Note: The application for registration of a transformative trademark is recorded as the date of filing as the date of international registration or the date of later designation (in case of later designation in Vietnam). In case of international registration entitled to the priority right under an international treaty, the application for registration of a transformed mark shall be recorded as the corresponding priority right, unless there are grounds for rejection.

Principles when transforming an international registration of a trademark into an application filed in the national format

The NOIP shall appraise the application for registration of a transformed trademark in accordance with the above provisions on transformation conditions and must comply with the principles in Clause 2, Article 28 of Decree 65/2023/ND-CP as follows:

For the elements of the form that have been accepted by the International Bureau in the corresponding international registration.

• The NOIP shall not re-examine the application, except for cases where the application contains errors (lack of regulations on the use of collective trademarks, regulations on the use of certification marks, lack of photographs or drawings showing the perspective of the three-dimensional trademark, etc.).
• The NOIP shall issue a decision to refuse to accept the application in case the application does not meet the prescribed conditions.

For trademark registration applications that have been accepted for protection in Vietnam

• The NOIP did not conduct a re-appraisal of the content.
• In case the application satisfies the prescribed transformation conditions, the NOIP shall carry out the procedures for notifying the intention to grant a protection title, the decision to grant a protection title, recording it in the National Register of Industrial Property, and announcing the decision in the Official Gazette of Industrial Property as for an application filed in the national format.

For a valid application for registration of a transformed trademark that is not subject to transformation from an international registration that has been accepted for protection in Vietnam

The NOIP carries out the procedures for accepting a valid application, publishing the application, appraising the content and subsequent procedures as for a trademark registration application filed in the national format.

Procedures for transforming international trademark registration into a national application in Vietnam

The transformation of international registration of a trademark into a national application in Vietnam is similar to the procedure for trademark registration, specifically:

Step 1: Receive the application

Organizations and individuals shall submit 01 set of dossier requesting the transformation of international registration of a trademark into a national application to the National Office of Intellectual Property via the online public service portal.

Step 2: Appraisal of the form of the application

In case of transformation from an international application for registration of a transformed trademark to an application filed in the national format: The National Office of Intellectual Property shall examine the compliance with the regulations on transformation conditions and forms for the application, thereby making a conclusion whether the application is considered valid or not, and shall be implemented as follows:

• In case the application is valid, the National Office of Intellectual Property shall issue a decision to accept the valid application;
• In case the application is invalid, the National Office of Intellectual Property shall refuse to accept the application.

For the case of transformation from an international registration that has been accepted for protection in Vietnam: The National Office of Intellectual Property shall appraise the compliance with the regulations on transformation conditions

Step 3: Publish the application

After the decision to accept a valid application is issued, the application will be published in the Official Gazette of Industrial Property.

Step 4: Appraisal of application content

• In case of transformation from an application for international registration of a trademark: Assess the possibility of protection of the object stated in the application according to the protection conditions, thereby determining the corresponding scope of protection.
• In case of transformation from international registration that has been accepted for protection in Vietnam: The National Office of Intellectual Property does not conduct re-examination of the contents

Step 5: Issuing a decision to grant/refuse to grant a protection title

• If the subject matter stated in the application does not meet the protection conditions, the National Office of Intellectual Property will issue a decision to refuse to grant a protection title;
• If the subject matter stated in the application satisfies the requirements on protection and the applicant pays charges and fees in full and on time, the National Office of Intellectual Property shall issue a decision to grant a protection title, record it in the National Register of Trademarks and publish it in the Official Gazette of Industrial Property.

Note that the application for transformation of trademark registration application online from 10/08/2025

Previously, the procedure for transforming an international trademark registration into a national application to the NOIP in one of the following methods: paper application or online application.

However, it should be noted that from August 10, 2025, in order to improve the efficiency of using online public services, promote the reduction and simplification of administrative procedures and promote digital transformation in the agency’s operations, the NOIP will prioritize receiving online documents with a lot of administrative procedures.  In particular, the common procedures are as follows:

• Procedures for transforming international trademark registration into a national filing application;
• Procedures for requesting recognition of changes in applicants;
• Procedures for amendment and supplementation of industrial property registration applications;
• Procedures for separation of industrial property registration applications;
• Procedures for withdrawal of industrial property registration applications;
• Procedures for maintaining the validity of an invention/utility solution protection title;
• Procedures for extension of the validity of industrial design patents and trademark registration certificates;
• Procedures for invalidation of protection titles

Thus, from 10/08/2025, when transforming the international registration of a trademark into a national application in Vietnam, it is necessary to submit the dossier online at the address: https://dichvucong.ipvietnam.gov.vn/

The above is a consultancy on the procedure for transforming a trademark international registration into a national application. If you have any related questions or need advice on trademark registration, please contact Viet An Law for the best advice and support!