International trademark registration methods

ASLAW

International trademark registration methods

Businesses in Vietnam that want to set foot in foreign markets first need to register for the protection of their trademarks in target markets. There are many ways to register for international trademark protection. In the following article, ASLAW will analyze international trademark registration methods including advantages, disadvantages, and recommendations so that businesses can choose the most suitable trademark registration method.

Basically, there are currently 3 popular international trademark registration methods globally, including:

1. Direct international trademark registration.

2. Trademark registration through the Paris Convention.

3. Registration via Madrid protocol.

Direct international trademark registration

Similar to trademark registration in Vietnam if the applicant is an organization or individual living and working in Vietnam, direct international trademark registration means filing directly to the IP Office of the target country because registering a trademark in Vietnam does not mean that the mark will be protected in other countries.

Direct international trademark registration will include the same steps as when a Vietnamese applicant files a trademark registration application with the National Office of Intellectual Property of Vietnam. However, it should be noted that for most countries, to register a trademark directly for a foreign individual or organization, they will need a local industrial property representative, i.e. representative in the target country to represent them in carrying out legal procedures.

Each country will have different procedures for trademark registration, but basically, most countries will follow the following process:

+ Step 1: Receive a trademark registration application;

+ Step 2: Examine the trademark application regarding formality;

+ Step 3: Publish the application for trademark registration in the Official Gazette;

+ Step 4: Issue a notice on the possibility of granting a trademark registration certificate to the trademark applicant/industrial property representative to pay the granting fee;

+ Step 5: Grant the certificate on paper or online (or both).

Trademark registration through the Paris Convention

Registering a trademark through the Paris Convention will help applicants save procedures, effort, and costs compared to the direct method of filing a trademark application.

Within 6 months from the date of filing the application in Vietnam or a country that is a member of the Paris Convention, the applicant has the right to apply to another country that is also a member of the Paris Convention while keeping the first filing date for the application in the target country. In other words, subsequent applications will be considered to be filed on the same day as the filing date with the NOIP for the first application filed in one of the countries that are signing parties to the Paris Convention.

It is relatively important to establish a priority date if the applicant’s trademark has a competitive element, meaning it is likely to be registered early by other parties. Therefore, the 6-month period of prioritization of the priority date can be a decisive factor in whether the mark is protected in the target market or not.

However, it should be noted that these trademark applications will be independent and will not affect other applications.

For example, a trademark successfully registered in Vietnam may not necessarily be protected in another member state of the Paris Convention because the mark may contain prohibited characters or images according to their laws.

Trademark registration through the Madrid system

The Madrid system is an international trademark registration system under the management of the World Intellectual Property Organization (WIPO), governed by two main legal documents, the Madrid Agreement and the Madrid Protocol. In particular, the Madrid Protocol is the more popular document, which is applied by most of the countries in the Madrid system. In contrast, the Madrid Agreement is not in vogue, only being accepted in a small number of countries.

The peculiarity of the Madrid system is that with a single international trademark application, in a single language, paying a fee in a single currency, an applicant can apply for protection in all jurisdictions that are a member of the Madrid Protocol or the Madrid Agreement (or both).

The Madrid system saves time and costs significantly for applicants in case the applicant needs to register a trademark in many countries around the world at the same time.

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