INTELLECTUAL PROPERTY ARTICLES

Process and procedures for international registration of Vietnamese origin trademarks

Process and procedures for international registration of Vietnamese origin trademarks
Process and procedures for international registration of Vietnamese origin trademarks

Currently, an increasing number of Vietnamese businesses are encouraging exports to other countries and trading products globally. This demand presents concerns for Vietnamese enterprises about establishing and protecting brand identities in the foreign market efficiently. Vietnamese company owners can solve this problem by registering trademarks of Vietnamese origin internationally.

What is international registration of Vietnamese origin trademarks?

International trademark registration is registration through the Madrid international registration system. This system facilitates the registration of multiple trademarks in countries around the world by simply filing one application and paying a fee for protection of trademarks in up to 125 countries. However, trademarks are territorial in nature and only protected in countries where they have been duly filled and registered. Registration of trademarks through the Madrid system does not imply that they are protected globally.

International registration of Vietnamese origin trademark is done when an enterprise submits a basic application for registration of Vietnamese origin trademark through the Madrid International Registration System.

What is a basic trademark application? There are two types of basic applications used to register international trademarks of Vietnamese origin: (i) already submitted a trademark application at the Vietnam Intellectual Property Office, (ii) the trademark has been granted a trademark protection certificate in Vietnam.

In case the enterprise has not yet submitted the basic trademark registration application in Vietnam, it is necessary to submit the trademark registration dossier at the earliest to proceed with international trademark registration procedure.

Registration process and procedures

1. Pre-registration

Enterprises must determine the vital trademarks of the company that are attached to products that will be sold in the foreign market before filing for international registration of trademarks of Vietnamese origin. The corporation must then navigate the markets in which it wishes to file for trademark protection, such as the nation in which it now conducts business and the potential markets in which it wishes to protect the trademark. Accurate preparation in this regard will help the company develop a long-term protection plan for its trademarks, eliminating the underlying risks from the beginning and avoiding the need to register for multiple protection extensions.

During this time, the company’s intellectual property representative should evaluate the possibility of international trademark registration in the country where the company wishes to file for trademark protection, referred to as the country designated for trademark protection.

2. Registration period

International registration of trademarks of Vietnamese origin includes the process at original country and abroad as follows: (i) submit an application at the Vietnam Intellectual Property Office (“NOIP”), (ii) the application is transferred by NOIP to the World Intellectual Property Organization (“WIPO”) for review and to the countries designated for protection for assessment of the trademark for consideration of protection.

From 12 to 18 months after receiving the international registration of trademarks of NOIP, the designated countries shall decide whether to protect the registered trademark or not. In countries where the time period for making a decision has lapsed without a decision being made, the trademark is implicitly protected.

If a designated IP Office refuses to protect all or part of the registered trademark, this decision shall not affect the decisions of other IP offices of the designated country.

For registration documents, depending on each country designated for trademark protection, the registration dossier may require additional documents. However, a basic set of documents for international trademark application includes:

  • Declaration of request for international registration of trademarks of Vietnamese origin,
  • International trademark application under Form MM2,
  • Power of attorney,
  • Trademark samples,
  • Documents related to the basic application (application declaration or copy of trademark protection certificate), and
  • Enterprise registration certificate of the applicant.

3. Trademark protection in designated countries

For international trademark registrations through the Madrid system, the results of trademark protection in each designated country will be recorded on WIPO’s international trademark database system (website: https://www3.wipo.int/branddb/en/#)

International registration of trademarks of Vietnamese origin is protected for a period of 10 years. The applicant can renew directly with WIPO at the end of each 10-year period. This extension is valid in the countries where the applicant has requested for protection.

International trademark registration usually takes a long time, from two to three years to be recognized by designated countries for trademark protection. Therefore, enterprises need to register trademarks at the earliest to avoid trademark infringement, counterfeit trademarks, and discrediting products and businesses. Moreover, many enterprises do not anticipate the risk of registration of similar trademark by a third party in a foreign market, which could lead to losing the right to do business and trading in the market in which the trademark has been registered for protection by such third party. In this case, in order to protect the enterprise’s interests, the owner may usually ask the competent authority to refuse the protection demand of such third party or take legal measures in accordance with foreign laws. The intellectual property law in Vietnam and in other countries around the world provides many regulations to protect the owner’s legal ownership of the mark once it has been registered for protection. Hence, to ensure the interests of the enterprise in the future, trademark protection in the international market must be implemented at the earliest possible.

The article is based on applicable law at the time noted as above and may no longer be appropriate at the time the reader approaches this article as the applicable law has changed and the specific case that the reader wishes to apply. Therefore, the article is only for reference.