Registering the vietnamese trademark in abroad

1. The procedures for registering the international trademark under the madrid syste

The procedure for international trademark registration through the Madrid Protocol is a form of international registration applied to countries which are members of the Madrid Agreement of 56 countries, including Vietnam. Today, The Vietnamese enterprises can use the Madrid trademark registration system to register their trademarks in member countries.

The filing of the application for registration of a trademark shall be conducted at the International Bureau and the application shall designate the countries which are party to the Madrid Agreement and the Madrid Protocol.

1.1. The additional documentation and quotation

- The enterprises need to add the following documents:  

NO.

DOCUMENT NAME

QUANTITY

SPECIFICATIONS

1

 Certificate of trademark registration

 02

 The notarized copy within 3 months

2

 Certificate of business registration

 02

 The notarized copy within 3 months

3

Sample of trademark (logo) to register

 01

 To copy disk or sent via e-mail to

luatsu@vlcvn.com

+ Time for preparing and compiling the file: 5 days

- The implementation period:

+ The time for examination of the application at the National Office of Intellectual Property of Vietnam: 2 months;

+ Time of examination of the application at the International Bureau: 12 - 18 months;

+ Time of protection: 10 years and can be extended several times;

+ In each designated State, a consideration of the protection possibility of trademark will be subject to the provisions of that country.

1.2. Look up the ability to register a trademark

In case, individuals, organizations and enterprises want to register under this form, V.L.C encourages you to take the following steps:

Look up firstly the ability to register a trademark: It will help the customer to avoid the risk of a rejected application due to a similar confusion with the protected application or protected trademark in each country.

1.3. Trademark registration

Based on the Application of trademark registration in Vietnam, V.L.C will represent the Customer to apply for trademark registration to the World Intellectual Property Organization (WIPO).

1.4. Language of use:

English or French.

1.5. Time for obtaining a certificate of registration under the Madrid Agreement

- The National Office of Intellectual Property of Vietnam will transfer the application to the Office of the World Intellectual Property Organization (WIPO) in Switzerland within 30 days. For Vietnamese enterprises or individuals are doing business in Vietnam, the application of international trademark must be submitted directly to the National Office of Intellectual Property (NOIP).

- Within 18 months from the filing date of a valid application to the International Intellectual Property Organization office, your company will be granted a certificate of the trademark registration in the countries designated in the application (In case no flaws or no rejection of protection).

2. Handling the international applications

2.1. How does the international application handle in the National Office of Intellectual Property?

The National Office of Intellectual Property is the national registry agency of Vietnam authorized to receive applications for international trademark registration under the Madrid Agreement. After receiving the application, the National Office of Intellectual Property will confirm the filing date in Vietnam of the international application, and then proceed to check and confirm the information stated in the application is correct with corresponding information in the national register. The international application will then be submitted by the National Office of Intellectual Property to the International Bureau in Geneva within two months of the filing date.

2. 2. How does the international application handle in the International Bureau?

Within three to five months from the date on which the International Bureau receives the application, the international application is examined for the formal requirements, productsand the classified services or products. The International Bureau does not test whether the trademark in the application meets the criteria for protection or not, or is the trademark identical or similar to the other registered international trademark or not. This test is the task of the national registry agency of designated countries.

If the application has no errors and it meets all requirements, the International Bureau shall grant the International Trademark Registration Certificate, register the mark in the International Register, publish the international registration in the International Gazette of trademark, and they will also send the international application to the countries designated in the application for examination under the trademark law of each country.

2.3. What date is the international registration date?

An International registration date is the submitting date of the international application to the National Office of Intellectual Property; the International Bureau receives your application from the National Office of Intellectual Property within two months of the filing date. If the International Bureau does not receive your application within two months, the international registration day will be the actual date which the International Bureau receives the international application.

2.4. How does the international application examination process take place in designated countries?

The national trademark registration office of the designated countries will carry out the trademark examination on the basis of the criteria of protection provided for in its trademark law after receiving the notification of the International Bureau of the protection of international registrations in their countries. If it does not meet the criteria for protection, the national registry agency of the designated country shall be entitled to send to the International Bureau the refusal notification of protection of international registration trademark in its territory within 12 months from the date of receipt of the notification from the International Bureau. After the above-mentioned 12-month period, the International Bureau has not received the notification of refusal, that country shall lose its right to refuse and the trademark shall automatically be protected in that country.

2.5. If the trademark under international registration is denied in one or some countries, is it rejected in the other designated countries?

NO. Trademarks under international registration are denied in any country and are not protected in that country but are still protected in other designated countries if they do not notify the refusal of protection within the 12-month period mentioned in the above part.

3. A protection of international registration

3.1. How long is the term of protection of an international registration?

An international registration is valid for a period of 10 years under the protocol, or 20 years under the treaty since the date of international registration, and may be renewed several times in succession, each time of 10 or 20 years.

3.2. When does the owner apply for an extension of the validity of an international registration?

Within 6 months before the expiry date, the owner must apply for an extension of the validity of the international registration.

3.3. The lists of countries which are member to the Madrid Agreement include

Albania, Algeria, Armenia, Austria, Azerbaijan, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, the Democratic People's Republic of Korea, Egypt, France, Germany, Hungary, Iran, Italy, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Luxembourg, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, Poland, portugal, Romania, Russia, San Marino, Serbia and Montenegro, Sierra Leone, Slovakia, Slovenia, Spain, Sudan, Swaziland, Switzerland, Syrian Arab republic, Tajikistan, The former Yugoslav Republic of Macedonia, Ukraine, Vietnam.

4. Legal bases

 + Intellectual Property Law 2005;

 + Decree No. 103/2006/ND-CP;

 + Circular No. 01/2007/TT-BKHCN;

 + Circular No. 22/2009/TT-BTC;

 + Madrid Protocol/Agreement (Madrid). 

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