Along with the trend of global integration in business, trademark protection has become one of the major.concerns for individuals and organizations. Not only in Vietnam but trademark protection in foreign countries is also registered by the owner. Accordingly, international trademark registration from Vietnam is becoming increasingly popular because. it brings many benefits to the owner both in terms of business and legal protection.
With many years of experience in trademark registration, LawPlus would like to send you .basic information related to international trademark registration from Vietnam.
>>>TRANSFER THE RIGHTS TO USE THE TRADEMARK
Table of Contents/Mục lục
1. WHAT IS INTERNATIONAL TRADEMARK REGISTRATION
1.1. The concept of international mark
According to Clause 16, Article 3 of the Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, and 2022, (IP Law) stipulates, “A trademark. is a sign used to distinguish goods, services of different organizations and individuals”. Because a mark will be protected according to the scope of the territory, it can be understood that an international. mark is a sign used to distinguish. goods and services of different organizations and individuals in the international market.
1.2. What is international trademark registration?
International trademark registration is understood as an individual. or organization filing an application for trademark registration outside their country’s territory with the expectation. that the designated country will approve and protect their trademark to avoid trademark infringement. in that country. Accordingly, we can understand that international trademark registration from Vietnam is an act. of individuals with Vietnamese nationality filing an application for trademark protection in other. countries in the world to avoid infringing upon its trademarks in those countries. In other words, international trademark registration is a way to help .individuals protect their trademarks to avoid infringement in foreign countries.
1.3. Right to register international trademark from Vietnam
Under Clause 41.2. Circular 01/2007/TT-BKHCN stipulates the right to international. registration of marks based on the basic trademark registration in Vietnam. Specifically:
– A 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 Agreement;
– A person who has filed trademark registration applications in Vietnam and who .has granted trademark registration certificates in Vietnam has the right to international registration of corresponding marks under the Madrid Protocol.
2. BENEFITS OF INTERNATIONAL TRADEMARK REGISTRATION FROM VIETNAM
Currently, more and more individuals and organizations register international trademarks from Vietnam. This shows that registration has brought many benefits to these individuals and organizations and has become a common trend in the market today. Among them, the outstanding benefits can mention as follows:
First, the owner ensures that the trademark is protected in foreign countries.
Accordingly, when his trademark is protected in another country, the owner will not have to worry about his trademark being infringed by individuals or organizations in the registered country. Specifically, such as counterfeited or used as similar, confusing trademarks in that market.
Second, the owner can expand the competitive market in the country of registration.
Once the trademark is protected, the owner has the right to conduct business activities to compete with other businesses in the same market. This helps to increase overseas sales for trademark owners.
Third, the trademark owner can exclusively use the mark in the country of registration.
Protected trademarks provide legal protection. In addition to directly using the protected trademark, the owner can exploit this trademark through the transfer of the right to use to recover the corresponding amount.
3. FORM OF INTERNATIONAL TRADEMARK REGISTRATION FROM VIETNAM
Currently, there are two ways to register an international trademark from Vietnam. It is a direct registration, filing an application directly in the designated country of registration, and filing an application through the international trademark registration system (the Madrid System).
3.1. Applying for the Madrid registration
The Madrid system is a global system designed to facilitate the registration of trademarks in countries around the world. This system includes Madrid Agreement and Madrid Protocol. Compare to the direct application in the designated country, the application through the Madrid system is performe more by individuals and organizations. However, a limitation is that this form only applies to countries in the Madrid system, not as comprehensive as applying directly.
3.1.1. Dossier composition:
– 02 Declarations of request for international registration of trademarks of Vietnamese origin, typed according to form No. 06-DKQT Appendix C of Circular No. 01/2007/TT-BKHCN;
– 02 copies of Declaration MM2 [posted at website: http://wipo.int (language is English)];
– 05 attached trademark samples (In case of registration as a color trademark, in addition to 05 color trademark samples, the applicant needs to submit 05 black and white trademark samples);
– Power of attorney;
– A photocopy of the establishment registration application or a photocopy of the certificate of trademark registration;
– 02 copies of MM18 in the case of an international application for registration of the mark in the United States;
– Documents proving the right of priority (if any);
Note:
In the declaration, it is necessary to specify the countries that are members of the Madrid Agreement (maybe concurrently a member of the Madrid Protocol) and the country that is only a member of the Madrid Protocol that the applicant wants to register for trademark protection. brand.
An application for international registration of a mark must be made by accurately filling in the applicants’ sections and accompanied by the same trademark samples as the one registered in Vietnam.
3.1.2. Order and procedures:
Step 1: Prepare documents
The ability to register their trademarks. After fully meeting the conditions, the owner proceeds to prepare the dossier.
Step 2: Proceed to file
An application for international registration of a mark is submitted to the International Office 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.
Step 3: Processing registration documents
– Formal examination and publication in the Official Gazette
After receiving the application for registration, WIPO will conduct a formal examination, including the applicant’s status, trademark sample, application form, and list of goods and services. …. If there are errors, request corrections and supplements.
If the formality requirements met, the International Bureau will publish the Application in the Official Official Gazette of WIPO and forward it to each designated country for consideration for protection.
– Substantive examination stage
After finishing the formal examination, WIPO will proceed to the substantive examination of the trademark application.
If the content meets the requirements, WIPO will issue a notice granting a protection title for the mark. In case of invalidity, WIPO will issue a decision to refuse to grant a protection title.
Step 4: Get results
Receive notices & results from WIPO and the Vietnam National Office of Intellectual Property.
3.1.3. Validity of international marks under the Madrid system
– The validity period of marks registered under the Madrid Protocol is 10 years and can extend further;
– The validity period of trademarks registered under the Madrid Agreement is 20 years and can extend further.
3.2. Submit an application for registration directly in the designated country.
3.2.1. Dossier composition:
– 01 international trademark registration application form;
– 01 declaration form 06-DKQT Appendix C of Circular No. 01/2007/TT-BKHCN;
– One copy of the fee and fee payment voucher (in case of payment of fees via postal service or directly into the account of the National Office of Intellectual Property);
– 01 original copy of the mark sample and the list of goods and services bearing the mark;
– 01 power of attorney (in case of authorizing another individual or organization to register).
Note:
– An application for international registration of a mark designating the country registered as a member of the Madrid Agreement and not designating any country as a member of the Madrid Protocol must be made in French.
– An application for international registration of a mark designating at least one country that is a member of the Madrid Protocol, including at the same time designating a country that is a member of the Madrid Agreement, must be made in English or French.
3.2.2. Order and procedures:
The procedure for international trademark registration is similar to that of filing through the Madrid system, except that the individual or organization must come directly to the desired country for protection.
Currently, many individuals and organizations have registered international trademarks from Vietnam. This registration helps individuals and organizations to protect their trademarks in the international market, avoiding trademark infringement. Accordingly, the law also encourages existing label owners to conduct international registration of trademarks through the issuance of regulations governing this practice.
The above is important information for owners who want to register international trademarks from Vietnam. Any questions, you can contact us via the hotline at +84 2862 779 399; +84 3939 30 522 or email info@lawplus.vn to be directly answered and consulted by the LawPlus team.
