International trademark registration: Things to know

International trademark registration is an important measure to help businesses protect their rights and interests when bringing their goods and services to foreign markets. However, international trademark registration procedures compared to domestic ones are quite complicated.

1. What is international trademark registration?

In Vietnam as well as other countries around the world, the scope of trademark protection is carried out according to the territorial principle, meaning that if a trademark is registered in a country, it will only be protected in that country.

International trademark registration is an important measure to help businesses protect their rights and interests in promoting and introducing their goods and services to countries in the region and around the world.

International trademark registration is a legal basis for businesses to protect their brands, partly helping businesses avoid counterfeiting and imitation of poor quality goods that affect reputation; This is the basis for businesses to have exclusive rights to use their trademarks internationally.

For example: Company A produces goods and has its headquarters in Vietnam. Goods produced by company A are exported and consumed in the Japanese market. Company A registered this trademark in Japan to avoid having its trademark infringed by another party in Japan.

5 Steps to Protecting Your Trademark Internationally

Registration form:

Owners can choose one of the following international trademark registration forms:

  • Submit a trademark application directly in the country of intended registration;
  • Submit a trademark registration application under the Madrid system (register under the Madrid protocol or under the Madrid agreement) through the Vietnam Intellectual Property Office

2. Register international trademark directly abroad

Each country has its own regulations regarding procedures for filing trademark applications for foreign applicants. However, basically there will be the following things in common:

2.1. Registration documents of trademark samples need to be registered.

List of branded products (in Vietnamese and English).

  • Applicant information (in Vietnamese and English).
  • Documents requesting priority rights (if any);
  • Authorization letter.
  • The trademark has been used (Use-in-commerce).
  • Intent-to-use.
  • Intent-to-use based on existing foreign registration.
  • Intent-to-use based on pending foreign registration.

Trademark Registration Process Overview

2.2. Registration procedure

Trademark registration in different countries is usually carried out in the following stages: Filing an application – Reviewing the form of the application – Publishing the application – Reviewing the content – Granting a certificate of protection or refusing.

2.3. Processing time: About 12 – 24 months.

2.4. Trademark protection term: Most countries protect trademarks for a period of 10 years and can be renewed many times.

3. Register international trademarks according to the Madrid system

The Madrid system is an international trademark registration system managed by the World Intellectual Property Organization (WIPO). The Madrid system facilitates the registration of trademarks in many countries around the world at the same time. This system is governed by two main documents: the Madrid Agreement and the Madrid Protocol.
International trademark registration under the Madrid system is used by many businesses because the procedure is simple, saves time and costs…

WIPO Madrid System – International Trademark Protection

>>>Read more: Opportunities of investment environment in Vietnam

3.1. Registration documents

  • Copy of Declaration requesting issuance of Certificate of basic trademark registration (applicable in case of application under the Madrid Protocol).
  • Notarized copy of Business Registration Certificate (if an organization).
  • Notarized copy of Passport (if individual).
  • Trademark sample (registered in Vietnam).
  • List of goods and services bearing the trademark.
  • Authorization letter to carry out procedures (if application is submitted through a representative).
  • Document evidencing the right to registration, if the applicant enjoys that right of another person.

3.2. Registration procedures through the Vietnam Intellectual Property Office

Step 1: Submit an international trademark application

The application for international trademark registration will be submitted to the International Office of WIPO through the Vietnam Intellectual Property Office. The National Office of Intellectual Property will evaluate and transfer the application to the International Office within 30 days from the date of receipt of a valid application.

Step 2: Appraisal of application

In case WIPO receives the registration application within no more than 02 months from the date of filing the application at the National Office of Intellectual Property, the date of filing the international application is counted as the date of filing the application in Vietnam. In case it is more than 02 months, the date of receipt of the application at the International Office is counted as the date of filing the international trademark registration application.

WIPO evaluates the form of the application. If valid, the application will be translated into other languages and published in the Industrial Property Gazette.

The application is then sent to the Trademark Registry of the member countries to which protection is assigned and a date is set to start the examination period for consideration by those countries.

If the examination deadline passes and WIPO does not receive any response, the trademark is considered valid in those countries. 

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