Procedure of international trademark registration under the Madrid Protocol

A trademark protection title registered in Vietnam is only valid within the territory of Vietnam. In case the applicant wishes to build and develop a trademark, export goods or provide services abroad, based on Vietnam is a member of the Madrid Protocol, businesses can register international trademarks registration under this system. After the overview article of Madrid system for trademark registration in Vietnam, we would like to introduce for Clients on detailed procedure of trademark international registration in Vietnam.

Conditions for international trademark registration under the Madrid Protocol

• The person who has been granted a Certificate of Trademark Registration in Vietnam has the right to international registration of the corresponding mark under the Madrid Protocol;
• Persons who have filed trademark registration applications in Vietnam and who have been granted trademark registration certificates in Vietnam have the right to international registration of the respective mark under the Madrid Protocol.

An international registration application for a trademark originating in Vietnam

Trademark originating in Vietnam means trademark have basic registration or basic application that filed in National Office of Intellectual Property of Vietnam. The requirements of an international registration application under Madrid Protocol includes:

• International Trademark Application (in prescribed form and language)
• A declaration of request for international registration of a mark made according to form 06-DKQT specified in Appendix C of Circular 01/2007/TT-BKHCN and an application for international registration of a mark made according to the form provided by the National Office of Intellectual Property for free fee.
• Trademark sample (9 samples of size 80 x 80mm)
• Notarized copy of Trademark Certificate or Trademark Registration Application in Vietnam
• Directly pay the necessary fees and charges
• Power of Attorney for the representative to file the application (if any)
• Relevant documents (if needed)

Note :

• The trademark application requires to specify the designated contracting countries of the Madrid system.
• The applicant must ensure that the information (especially the name and address of the applicant, the goods, services and subgroups of goods and services) declared in the international registration application for the mark is accurate, including both language and translation.
• An application for international registration of a trademark is filed with the International Bureau through the National Office of Intellectual Property.

The NOIP is responsible for transferring an international trademark registration application to the International Office within 30 days from the date of receipt of all valid application documents as prescribed.

Procedures in International Bureau of WIPO

The following procedure shall be applicable to cases where trademark applications are not refused protection in the designated contracting countries. Your trademark application will undergo the following basic stages:

Step 01: Filing an international registration application at the National Office of Intellectual Property of Vietnam (NOIP, the country of origin)

After submitting the international registration application at the Office of the country of origin, this Office is responsible for transferring the dossier to the International Bureau (IB) within 30 days from the date of receipt a valid profile.

In case the IB receives a valid dossier from the Office of the country of origin within 02 months from the Office of the country of origin receives the international registration application, this date is simultenously the date of filing of the international application filing recognized by IB. If the application is not completed within 02 months, the international filing date will be the date the IB receives all valid documents.

Step 02: Formality examination of international applications and publication in the WIPO Official Gazette

After receiving a valid application, the IB will check the formality of the application within 2-4 months. If the application meets the formal requirements, the international application will be published in the most recent issue of the WIPO Official Gazette. The WIPO Gazette is usually published four (04) times a month.

Step 03: Substantive examination of applications in designated contracting countries

After your application is published in the WIPO Official Gazette, it will be assessed for protection in accordance with the regulations of designated contracting countries.

This period will nomarlly be 12 months or 18 months for some countries from the date of receipt of the WIPO notification.

Note: In the event that a refusal of protection is made based on an objection from any other third party, the above period may be extended. The National Office of the designated contracting country must notify the IB of the time limit to object to the IB to determine the time limit for the final notification.

The validity duration of an international protection title

After being accepted for protection, the validity duration of protection title is 10 years from the date of filing the international application. Trademarks can be renewed consecutively for 10 years each time.

Viet An Law Firm is always ready to exchange and support customers with necessary information. Please contact Viet An Law Firm for specific advice.