International Trademark Registration originated from Vietnam

International Trademark Registration originating from Vietnam is a strategic step that enables enterprises to expand their business activities into foreign markets while simultaneously protecting their intellectual property on a global scale. Below is the legal advice from Viet An Law regarding procedures, conditions, and important notes when carrying out the International Trademark Registration process.

What is the International Trademark Registration originated from Vietnam?

International Trademark Registration refers to the process in which an individual or organization files an application to protect a trademark in countries outside their own territory, to have the laws of those countries recognize and safeguard the ownership rights over the trademark, thereby preventing infringement.

Accordingly, International Trademark Registration originated is understood as the process in which individuals or organizations of Vietnamese nationality or having their headquarters in Vietnam file applications to protect their trademarks in other countries, in order to ensure ownership rights and avoid the risk of infringement in foreign markets. In other words, this is a method that allows trademark owners to expand the scope of brand protection on a global scale.

Conditions for International Trademark Registration originated

According to Circular 23/2023/TT-BKHCN guiding the Intellectual Property Law and Decree 65/2023/ND-CP issued by the Minister of Science and Technology regulating the right to international trademark registration based on basic trademark registration in Vietnam, individuals and organizations are entitled to carry out International Trademark Registration originated from Vietnam in two specific cases as follows:

• Any person who has been granted a Trademark Registration Certificate in Vietnam is entitled to apply for international trademark registration under the Madrid Agreement;
• Any person who has filed a trademark application in Vietnam and any person who has been granted a Trademark Registration Certificate in Vietnam is entitled to apply for international trademark registration under the Madrid Protocol.

Accordingly, in cases where an applicant wishes to carry out an International Trademark Registration originated from a basic trademark application filed in Vietnam, the essential condition is that the applicant must already have been granted a Trademark Registration Certificate in Vietnam.

Application dossier for International Trademark Registration originated from Vietnam

For a Madrid application originated from Vietnam, the applicant must file through the Intellectual Property Office of Vietnam, including the following documents:

• Application using Form No. 01 in Vietnamese as provided in Appendix II of Decree 65/2023/ND-CP.
• 02 MM2 forms in English or French according to the form of the International Bureau.
• 02 trademark specimens identical to the trademark in the basic application filed in Vietnam or the Trademark Registration Certificate (basic registration).
• 02 MM18 forms in English (if the application designates the United States).
• Power of Attorney (in case the application is filed through a representative).
• Receipt of payment of fees for carrying out the procedures of International Trademark Registration originated
• Other relevant documents (if necessary).

The procedure for International Trademark Registration originated through the Madrid System

Step 1: Trademark protection feasibility search (not mandatory but recommended)

Before applying for International Trademark Registration, individuals or enterprises should conduct a preliminary search to assess the registrability of the trademark in the intended countries of protection. This search helps minimize the risk of refusal due to similarity or identity with existing trademarks.

Once it is determined that the trademark is capable of protection, the applicant may proceed to apply the Madrid System through the Intellectual Property Office of Vietnam (NOIP) for transmission to the International Bureau of WIPO.

Step 2: Preparation and submission of the international trademark application

After receiving favorable search results, the applicant must prepare a complete dossier in accordance with regulations. The preparation time is usually 3–5 working days after all necessary information and documents have been collected.

The application will be filed at the Intellectual Property Office of Vietnam (NOIP). NOIP will conduct a formality examination and, if valid, forward the application to the International Bureau of WIPO within 30 days from the date of receipt of the valid application.

Step 3: Monitoring the process and responding to designated countries

If WIPO receives the application within no more than 2 months from the filing date at the NOIP, the international filing date will be considered the same as the Vietnamese filing date. In case of exceeding the 2-month limit, the date of receipt at the International Bureau will be deemed the filing date of the International Trademark Registration.

WIPO will conduct a formality examination of the application, and if valid, translate it into other languages and publish it in the industrial property gazette. The application will then be forwarded to the Trademark Offices of the designated member countries for protection. At the same time, the substantive examination period will commence: 12 months (under the Madrid Agreement) or 18 months (under the Madrid Protocol), during which the designated countries will examine the application. If WIPO does not receive any refusal within this period, the trademark will automatically be considered valid in those countries.

Fees for International Trademark Registration originated.

The fees include:

• Application fee to the Intellectual Property Office of Vietnam (NOIP): Preliminary formality examination fee: 2,000,000 VND.
• International fees, including:
• Preliminary formality examination fee payable to the NOIP: 2,000,000 VND;
• Basic fee: 653 Swiss francs, or 903 Swiss francs for a colored trademark;
• Supplementary fees: depending on the countries where protection is sought and the number of classes of goods and services to be protected.

To facilitate the estimation of fees payable to WIPO, applicants may use the Madrid System Fee Calculator available on the WIPO website when carrying out an International Trademark Registration.

The benefits of International Trademark Registration originated

When customers carry out an International Trademark Registration, they will obtain the following benefits:

• International business: Ability to sell goods on e-commerce platforms in different countries. For example, to conduct online business on Amazon, the applicant needs to register the trademark in the corresponding country.
• Exclusive use rights: Enterprises with international trademark registration will have the exclusive right to use the trademark in the countries where it is registered. This helps prevent acts of infringement, imitation, or counterfeiting of the trademark in the countries where the enterprise operates.
• Competitive advantage: Creating a competitive edge over other enterprises in the same business field within the designated country.
• Facilitated assignment and licensing: Ability to transfer trademark rights or license usage to third parties on a royalty basis.
• Prevention of trademark misappropriation: Avoiding the risk of trademark misappropriation in international markets, while minimizing costs for dispute resolution related to trademark ownership, even in jurisdictions that apply the first-to-use principle.

Notes on International Trademark Registration originated from Vietnam

The international trademark registration depends on the basic Vietnamese application for 5 years from the international registration date. If the Vietnamese trademark is refused or canceled, the international registration will also lose its validity accordingly.

A “transformation” application may be filed if the international trademark registration loses its validity in Vietnam, but the owner wishes to maintain protection in other countries.

The content and format of the trademark must be consistent with the Vietnamese application to avoid conflicts arising from modifications.

Enterprises should proactively monitor office actions from designated countries and submit timely responses or explanations when required during the International Trademark Registration process.

If you require legal consultation regarding International Trademark Registration, please contact Viet An Law for the best support!