International Registration of Marks through Madrid system

International Registration of Marks through Madrid system

1. Right of international registration of marks is based on basic mark registrations in Vietnam

a/ Persons who are granted certificates of registered marks in Vietnam enjoy the right of international registration of those marks under the Madrid Agreement;

b/ Persons who have filed mark registration applications in Vietnam and persons who are granted certificates of registered marks in Vietnam enjoy the right of international registration of those marks under the Madrid Agreement.

2. Mark international registration applications originating in Vietnam

a/ A mark international registration application that designates a nation being a contracting party to the Madrid Agreement in which the protection is sought to be registered and does not designate any nation being a contracting party to the Madrid Protocol must be in French.

 b/ A mark international registration application that designates at least one nation being a contracting party to the Madrid Protocol, and designates also a nation being a contracting party to the Madrid Agreement must be in English or French.

c/ An applicant shall submit a written declaration requesting international registration of a mark made according to a set form (not printed herein) and a mark international registration application made according to a form supplied free of charge by the NOIP. The applicant shall clearly indicate in the written declaration countries being contracting parties to the Madrid Agreement (which may concurrently be contracting parties to the Madrid Protocol) as well as those contracting to only the Madrid Protocol in which he/she seeks the protection of a mark. A mark international registration application must be made by accurately and fully filling information in sections reserved for the applicant and accompanied with mark specimens true to those already registered in Vietnam.

d/ An applicant should preliminarily calculate the total amount of fees and charges according to the fee tariff printed in the application form or may request the NOIP to notify the exact amount of fees and charges to be paid to the International Bureau. He/she shall pay those fees and charges directly to the International Bureau and additionally pay relevant fees and charges set by the NOIP.

e/ An applicant shall guarantee that information (especially his/her name and address, goods, services and classification thereof) supplied in a mark international registration application, including the language and translations thereof, are accurate and consistent with information stated in the relevant basic mark registration certificate or basic mark registration application. He/she shall pay amounts of fees due for the modification or supplementation of the mark international registration application containing inaccurate or inconsistent information under notices of the International Bureau.

f/ All mails and transactions related to a mark international registration application shall be communicated and conducted through the NOIP. The NOIP shall promptly notify requests of applicants to the International Bureau and vice versa under relevant treaties.

3. The agency receiving mark international registration application originating in Vietnam

a/ Mark international registration applications shall be filed with the International Bureau through the NOIP. The NOIP shall transfer mark international registration applications to the International Bureau within 30 days after receiving complete and valid application documents.

b/ The date the NOIP receives a mark international registration application shall be considered the date of filing a mark international registration application in case the International Bureau receives that application within two months from the date indicated in the NOIP’s seal of application receipt. If the application is not completed by the applicant before it is sent to the International Bureau within the above time limit, the date of receipt of the application by the International Bureau shall be considered the date of filing the mark international registration application.

4. Supplementation, modification and transfer of mark international registration applications, mark international registrations originating in Vietnam   

a/ After an application is filed with the International Bureau, all transactions between the applicant and the International Bureau related to the modification of the name and address, narrowing of the list of goods and services stated in the mark international registration application, mark international registration and extension of validity of mark international registration shall be established in writing according to a set form (not printed herein) and effected through the NOIP. The applicant shall pay prescribed fees and charges for those transactions.

b/ A mark proprietor shall request, through the NOIP (or directly request the International Bureau for international registrations of marks in nations acceding only to the Madrid Protocol), the International Bureau to record the transfer of the proprietorship under according to the international registration of mark and relevant treaties and pay prescribed fees and charges.

5. Processing of mark international registration applications designating Vietnam

a/ After receiving a notice of the International Bureau on a mark international registration application designating Vietnam, the NOIP shall conduct the substantive examination of the application according to the procedures applicable to mark registration application filed directly with the NOIP. Within 12 months after the International Bureau issues the notice, the NOIP shall make a conclusion on protectability of the mark.

b/ For a mark protectable under Vietnamese law, the NOIP shall issue a decision on protection of internationally registered mark, publish it in the Industrial Property Official Gazette, and record it in the national register of marks within one month from the date of its issuance. The protection coverage (volume) shall be certified according to the content of the request of the mark international registration application recorded by the World Intellectual Property Organization (WIPO) and certified by the NOIP.

c/ For a mark unprotectable or partially refused, the NOIP shall, before the expiration of the above 12-month time limit, notify in writing the International Bureau of the refusal for subsequent notification to the applicant, clearly stating the reason for the refusal and the refused contents.

d/ Within three months after the NOIP sends a notice on its refusal, the applicant may lodge a complaint about the NOIP’s refusal. Procedures for lodging and settling complaints shall be carried out as for mark registration applications filed directly with the NOIP. Results of complaint settlement shall be notified by the NOIP to the International Bureau and the applicant.

e/ As from the date a recognized mark international registration becomes valid in Vietnam, the NOIP shall, upon the request of the mark proprietor, grant a certificate of protection in Vietnam of internationally registered mark, if the requester pays the prescribed fee.

6.  Extension of validity of mark international registrations originating in Vietnam

Within six months before the date of expiration of the valid duration of a mark international registration (20 years from the filing date of a mark international registration application for nations being contracting parties to the Madrid Agreement, including those concurrently contracting to the Madrid Protocol; 10 years from the filing date of a mark international registration application for nations contracting only to the Madrid Protocol), the applicant shall pay the fee for extension of validity of mark international registrations according to notices of the International Bureau.

7. Mark registration applications converted due to invalidation of mark international registrations  

a/ If a mark international registration in Vietnam of a mark proprietor who is a national of a nation contracting only to the Madrid Protocol is invalidated under Article 9quinquies of the Madrid Protocol, such person may file a converted mark registration application made according to a set form (not printed herein) to the NOIP for registration of protection of the very mark for part of or the whole goods or services on the list of goods and services recorded in the invalidated mark international registration.

b/ A converted mark registration application shall be accepted if it satisfies the following conditions:

(i) It is filed within three months from the date of invalidation of the relevant mark international registration;

(ii) Goods or services stated in the converted mark registration application are on the list of goods and services stated in an ordinary mark international registration;

(iii) It satisfies all formality and substantive requirements according to Vietnamese law and the applicant pays fully the prescribed fees and charges.

c/ A converted mark registration application is allowed to bear the filing date or the date of priority of the relevant mark international registration application (if the mark international registration application enjoys the right of priority under treaties).

d/ The NOIP shall process applications for registration of converted marks as for ordinary marks.