(with Vietnamese origin and Vietnamese designation)
Enterprises that wish to build and develop their brand, and export goods/ services abroad, should promptly register an international trademark. Registering a trademark abroad will help businesses penetrate, create, maintain, and develop export markets, combating any violations, unfair competition, or appropriation by competitors. There are two common ways to register a trademark abroad: direct registration in each country and international trademark registration under the Madrid system. Viet An Law hereby introduces the procedure for Madrid trademark registration in Vietnam with Vietnamese origin and Vietnamese designation under the current regulations.
Legal basis
Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
Decree No. 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and management state on intellectual property.
A Madrid application is an international trademark registration application filed under the Madrid Agreement or the Madrid Protocol. An international trademark with the Madrid application is a trademark registered with the Madrid application with signs used to distinguish goods and services of the same or similar type from different production and business establishments.
Procedures for international trademark registration using Madrid application with Vietnamese origin
Pursuant to Clause 2, Article 25 of Decree No. 65/2023/ND-CP, the Madrid Application is specified in the registration dossier as follows: “ForMadrid application with Vietnamese origin, the applicant must submit it through the State management agency for industrial property rights.”
Components of an international trademark registration application using the Madrid Application
Clause 3, Article 25 of Decree 65/2023/ND-CP stipulates documents for Madrid applications of Vietnamese origin, including the following documents:
Declaration requesting international registration of a trademark of Vietnamese origin according to Form No. 01 in Vietnamese in Appendix II of Decree No. 65/2023/ND-CP;
02 MM2 declaration forms according to the International Office’s form in English or French;
02 trademark samples identical to the trademark in the registration application filed in Vietnam (basic application) or trademark registration certificate (basic registration);
02 MM18 declaration forms in English (if the application specifies the United States);
Authorization letter in Vietnamese (in case the application is submitted through a representative);
Proof of payment of fees for carrying out international registration procedures for trademarks of Vietnamese origin;
Other relevant documents (if necessary).
Process of Madrid Applications with Vietnam origin and related requirements implemented in Decree 65/2023/ND-CP
To meet the requirements for filing rights under the Madrid system, an individual/organization must first have a submitted application or trademark protected at the Vietnam National Office of Intellectual Property.
Subjects who satisfy the right to file requirement have to:
Have business activities in a country participating in the Madrid Agreement and/or the Madrid Protocol. Because Vietnam has joined the Madrid Agreement and the Madrid Protocol, Vietnamese businesses can apply to countries that are members of both agreements;
Or reside in a participating country.
For example: If the client is a citizen or has business activities in Vietnam, the connection here is understood to be with Vietnam (member of the Madrid system) and must file an international application through the National Office of Intellectual Property.
Secondly, regarding facility registration
If you determine that you have the right to apply for registration, you must either have applied or have your trademark protected at the Vietnam National Office of Intellectual Property.
You must have a base trademark before you can apply for international registration of your trademark through the National Office of Intellectual Property.
Thirdly, regarding the declaration and content
Submit an international application under the Madrid system through the National Office of Intellectual Property, which will examine the correspondence with your basic trademark, confirm the international application, and then submit it to WIPO. Therefore, it is necessary to pay attention to the declaration and list of goods and services:
Declaration:
To file an international application, you must use declaration MM2 (available in English, French, and Spanish).
Send the MM2 declaration to the Vietnam National Office of Intellectual Property, do not send it directly to WIPO.
Note that all international applications designating the United States of America must include Form MM18 – Declaration of Intent to Use the tradem
List of goods and services:
Classifying goods and services according to the newest International Classification of Goods and Services (Nice Classification).
Once an international application has been filed, it is not possible to add or expand the class of goods and services, not even this class mentioned in the base mark. If you wish to expand your classification after submitting your MM2 declaration, you will need to submit a new international application.
Monitoring application progress
To receive email notifications about your application status, simply provide your email address in section 2 of your international application form (MM2).
By providing your email address, you will be automatically subscribed to the electronic notification service from WIPO. All notifications regarding application status including deficiency notices will be sent electronically to the email address provided. Nowadays, it will no longer receive paper dispatches from WIPO.
Process of Madrid trademark registration with Vietnamese origin
Under Article 26 of Decree No. 65/2023/ND-CP regulating the processing of Madrid Applications as follows:
Step 1: Submit an application for international trademark registration at the National Office of Intellectual Property.
Step 2: Receive Madrid Applications with Vietnamese origin
The state management agency on industrial property rights is responsible for examining the application to determine whether it meets the prescribed requirements and implements the following procedures:
In case the application has errors, the state management agency in charge of industrial property rights shall notify the applicant to correct the errors. In case the applicant does not correct the errors within 03 months from the date the state management agency in charge of industrial property rights issues the notice, the application will be considered withdrawn.
In case the application has no errors or has errors but the applicant has corrected the errors satisfactorily, the state management agency for industrial property rights will issue a notice of fees and charges that the applicant needs to pay. Submit directly to the International Bureau, sign the application, and transfer the application to the International Office within 15 days from the date of notice of fees and charges.
The date the state management agency on industrial property rights receives the Madrid Application originating in Vietnam will be considered the international registration date of that application in case the International Bureau receives the application within 02 months from the date recorded on the application receipt stamp of the state management agency on industrial property rights.
In case the application is not completed and sent to the International Bureau within the above time limit, the date of receipt of the application at the International Bureau will be considered the date of international registration.
The international filing date is the date the local Intellectual Property Office receives the international application in the case the International Bureau (WIPO) receives a valid application from the Intellectual Property Office of the original applicant country within 02 months from the date of applying. If the application is not completed within 2 months, the international filing date will be the date the International Bureau receives all valid documents.
Step 3: Notify the applicant after the application is submitted to the International Office
After the Madrid Application with Vietnamese origin is submitted to the International Bureau, the state management agency for industrial property rights notifies the applicant and continues processing (coordinate with the applicant if necessary) notices, requests from the International Bureau, or other matters related to the application (if any).
Step 4: WIPO examines the form of the international application and publishes it in the WIPO Official Gazette
After receiving a valid application, the International Bureau will check the formality of the application within 2-4 months.
If the application meets the formal conditions, the international application will be published in the latest WIPO Official Gazette, which is usually published 4 times a month.
Step 5: Substantial examination in all selected and/or designated countries
After your application is published in the WIPO Official Gazette, the application will be examined for protection according to the regulations of the selected and/or designated country.
Normally this period will be 12 months or 18 months for some countries from the date of receipt of WIPO’s notification.
Note: In case the refusal of protection is made based on an objection from any other third party, the above deadline may be extended. The national office of the designated country must notify the International Bureau about the time limit for opposing the application for final notification.
Procedures for international trademark registration using Madrid Application with Vietnam designation
Under Article 27 of Decree 65/2023/ND-CP, the processing of Madrid Applications designating Vietnam is regulated as follows:
After receiving notice from the International Bureau on the Madrid Application designating Vietnam, the state management agency on industrial property rights shall conduct a substantial examination of the application as for a trademark registration application filed under national format.
Within 12 months from the date the International Bureau issues the notice, the state management agency on industrial property rights concludes the trademark’s ability to be protected.
In case the trademark meets the protection conditions according to the provisions of Vietnamese law
For trademarks that meet the protection conditions prescribed by Vietnamese law, the state management agency on industrial property rights carries out the following procedures:
Before the end of the 12 months, the state management agency for industrial property rights shall issue a decision to accept the protection of an internationally registered trademark in Vietnam, recording it in the National Register of Industrial Property (International Registered Trademark Section) and send to the International Bureau a declaration of protection;
Publish the decision in the Industrial Property Official Gazette within 02 months from the date of the decision.
The scope (volume) of protection is determined according to the content required in the international trademark registration recorded by the International Bureau and accepted by the state management agency on industrial property rights.
In case goods or services of the trademark do not meet the protection conditions or but do not satisfy the international registration requirements
For trademarks containing part or all of the goods or services that do not meet the protection conditions or trademarks that meet the protection conditions but do not satisfy the international registration requirements (lack of regulations on the use of collective trademarks, certification mark, lack of photos or drawings showing the three-dimensional perspective of the mark…), before the end of the 12 months, the state management agency for industrial property rights issues a notice of temporary refusal, clearly stating the content and reasons for the intended refusal and sending that notice to the International Bureau.
Within 03 months from the date the state management agency in charge of industrial property rights sends a notice of temporary refusal for part or all of the goods or services, the applicant has the right to correct errors or omissions. There are opinions opposing the state management agency’s intention to refuse industrial property rights.
Correction of omissions or opposition to intended refusal is carried out according to the same procedures as for trademark applications filed according to the national format, including regulations on applying.
This article is the procedure for Madrid trademark registration in Vietnamthat Viet An Law informs you. Industrial property representative – Viet An Law Firm is ready to provide services related to industrial property registration to support you, please contact us to receive the best advice.
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