Get a trademark certificate in Monaco

Located along France’s Côte d’Azur, Monaco benefits from its prime location on the Mediterranean, with easy access to European and North African markets. Monaco’s economy is closely tied to France’s, benefiting from the country’s political and economic stability. The tourism industry contributes more than 25% of Monaco’s GDP, being the nation’s most important source of income. Monaco attracts international visitors with its casinos, luxury hotels, attractions such as the Palace of Monaco, the Monaco Museum and Princess Grace Avenue. World-class sporting events such as the Monaco Grand Prix also contribute to attracting visitors and boosting revenue for the tourism industry. Monaco is an important financial center with a thriving banking, investment fund and asset management company. Preferential tax policies and a stable business environment attract many international financial institutions to Monaco to operate. Financial services contribute more than 10% of Monaco’s GDP. Therefore, more and more businesses are expanding their business scope here, in order to be able to distinguish their trademarks from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law would like to guide customers preliminarily through the procedure for trademark registration in Monaco through the article below.

Legal basis

• Law No. 1.058 of June 10, 1983 on Trademarks and Service Marks;
• Other relevant legal documents

General overview of trademarks in Monaco

Trademark concept

Legally, a trademark is a mark that allows any legitimate person or entity to distinguish their goods or services from competitors.

Why trademark registration is needed?

Registering a trademark with the Intellectual Property Office will give businesses the following benefits, right from the date of filing the application:

• Exclusive right to use the trademark throughout the national territory for 10 years. The business has the sole legal authority to use its trademark for registered products or services.
• Extend that monopoly to other countries. Businesses can register their trademarks abroad for protection in other markets.
• Protect your investment. Businesses can sue anyone who copies their trademark without permission. This helps prevent misuse of the company’s trademark and protects its reputation.
• Generate income quickly. Businesses can license other parties to use their trademarks for commercial exploitation, providing an additional source of income.

Note:

In addition to the benefits listed above, the “community” mark also presents a quality image. When filing a community trademark application with the Office, the business should include a copy of the regulations governing the use of that trademark. Exceptions are made for ” well-known marks” protected by the goodwill of that mark, regardless of whether it has been applied for and registered with the Office.

Trademark registration in Monaco

To secure trademark ownership is to file a national registration application directly at the Intellectual Property Office.

Note: Applications must be submitted in person or online via the following link: https://mcipo.gouv.mc/en/content/trademarks/eservices and are not accepted by post, email, fax or any other form.

Trademark registered entity in Monaco

Any individual or legal representative of an organization can file a trademark application with the Intellectual Property Office, either in person or through a representative. The applicant shall be the trademark owner.

Individuals: Individuals who are skilled workers, craftsmen, or freelancers.

Organizations: Organizations understood include business and non-profit companies, associations, foundations, the State, City People’s Committee, etc.

Note: For companies that are in the process of incorporation and have not yet officially operated, the application must be filed in the name of an individual (who can be the founder of the company). After the company is officially incorporated, this individual will transfer the trademark to the company. At that point, the company will become the new owner of the trademark.

Representation: The applicant may be represented by an agent at will. Representatives can be experts in industrial property. When applying, it is necessary to attach a power of attorney allowing the representative to act on behalf of the applicant.

Trademark registration process in Monaco

The trademark registration process at the Monaco Intellectual Property Office is divided into 3 main stages:

Stage 1: Before applying

• Identification of products and/or services: Clearly identify those products and/or services protected by the applicant’s trademark. This is important because it determines the scope of protection.
• Check availability: Check if the applicant’s trademark has been registered by someone else to avoid infringement of proprietary rights.
• Prepare required documents: Prepare the required documents, such as priority documents (if applicable).
• Complete the application form: Complete the application form.

Stage 2: Application and appraisal

• Application and payment of fees: Submit the application and fees in person at the Office.
• The Office of Intellectual Property appraises the application: Within two months from the date of submission, the Office will conduct an appraisal of the validity of the form and content of the application.
• Handling issues: If the application has problems, the applicant will be notified and given a deadline to fix it.

Phase 3: Registration

• Title Office: If the application is valid, the Office will grant trademark ownership to the applicant.
• Notice and Issuance of Registration Certificate: The applicant will receive a notice and a Certificate of Trademark Registration.
• Disclosure of registration information: The applicant’s trademark registration information will be published in the Official Gazette of Monaco.

Registration of trademark protection in Monaco through the Madrid System

The Madrid system is a convenient and cost-effective Monaco league for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Monaco joined the Madrid Agreement on 1 September 1924.
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Monaco accessed the Madrid Protocol on 1 April 1998.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Applications consist of the Madrid Singles of Vietnamese origin and the Madrid Applications with the Monaco designation.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or Monaco;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

If you want to file a trademark application in Monaco, please contact Viet An Law for the most effective support.