The international registration of intellectual property rights in foreign countries shall comply with the provisions of the law of the host country according to the international treaties of which Vietnam is a contracting party and the provisions of Vietnamese law.

Looking for more information:

1. Delegate trademark under the Madrid System
2. Trademark registration in Europe
3. Trademark registration in the United States
4. Trademark registration in Laos, Cambodia and Myanmar

>> Call the lawyer for consultancy on intellectual property: 0986 38 66 48

Mr.Le Minh Truong (Lawyer, Director of Minh Khue Law Firm) participated in the 60-minute program on VTV6 - Legal advice on intellectual property

1. Trademark registration under the Madrid System

The Madrid system for international trademark registration was established in 1891, under the Madrid Agreement (1891) and the Madrid Protocol (1989). The system allows the applicant to simultaneously register for trademark protection in multiple countries through a single application.

In order to register a trademark under the Madrid System, an applicant must prepare a Document for registration of a trademark including:

- Declaration requesting international trademark registration, made according to form No. 06-ĐKKT, specified in Appendix C to Circular No. 01/2007/TT-BKHCN;

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- An application for international registration of a trademark, made according to the form set out by the National Office of Intellectual Property (attaching samples of marks identical with those registered in Vietnam);

- A letter of authority with the signature and seal of the applicant;

- A sample of a mark (18 specimens of a size not larger than 8 cm by 8 cm and not less than 2 cm by 2 cm);

- A notarized copy of the certificate of registration of trademarks/services granted in Vietnam (if applied under the Madrid Agreement);

- Copy of the application for registration of the mark (certified by the first application - if submitted under the Madrid Protocol);

- List of goods/services requested for protection.

Some points to consider when filing an international trademark application under the Madrid Agreement and Protocol:

Right to apply for trademark registration:

- The person who has been granted a certificate of registration of a mark in Vietnam has the right to file an application for registration of a mark corresponding to the Madrid Agreement;

- Applicants for registration of a trademark or a certificate of registration of a trademark in Vietnam have the right to file an application for registration under the Madrid Protocol.

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Language:
- An international registration designating a country which is a party to the Agreement without designating a member of the Protocol must be made in French;

- An international registration designating at least one member country of the Protocol, which may simultaneously be a Member of the Agreement and Protocol, may be made in English or French.

- Particularly for applications for international registration under the Madrid Protocol: Where an application for international registration is rejected because an application for registration of a trademark in Vietnam is invalid, within 3 months, the applicant may file a transfer of an international application into a national application with the priority date calculated as the date on which the international application for registration of the mark is filed.

2. Intellectual Property Registration in Europe

In order to create a favorable, fast and cost-effective way for trademark owners to register their trademarks in Europe, the European Community has established a system of trademark registration in all member states are called the Community Trade Mark or CTM. To be protected in all 27 member states, applicants only need to submit a single application. Trademarks are only protected when they meet protection standards in all member states of the community.

Documentation required for filing:
- Full name, address and nationality of the applicant;
- Letter of authority of the applicant;
- 5 trademark samples to be registered;
- The list of goods and services bearing the mark;

Registration agency: "Office for Harmonization in the Internal Market", abbreviated to OHIM, is based in Spain.

The CTM Trademark Application can be made in one of the 11 official languages of the Community (hereinafter referred to as the First Language). In the application, applicants must declare one of five languages: Spanish, German, English, French and Italian (these are the five official languages used in OHIM) as the second language to carry out procedures, such as petitioning, appealing, canceling, etc.

3. Intellectual Property Registration in America

Foreigners can apply for a trademark registration in the United States on the following grounds:

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- Trademarks have been used in commerce in the United States;

- intends to use trademarks in US trade;

- The mark has been filed for registration in a country which is a member of the Paris Convention, or a country which is a party to an international trademark treaty recognized by the United States;

- The mark has been registered in the country of origin of the Applicant.

The necessary documentation and information for filing a US trademark application include:

- The sample of the mark applied for;

- List of goods and services bearing the mark;

- Information on the applicant for registration of the mark (name, address, nationality, etc.);

In addition to the above documents, the applicant is required to submit additional documents depending on the basis of the application:

- Where the mark has been used: The applicant must declare in the application that the mark has been used and the document demonstrates the use of the mark (eg, the packaging for which the mark or the photograph is taken. use on goods, services, etc.);

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- Where the mark is not yet in use: The applicant must declare in the trademark intention to use the mark in US trade. In this case, the applicant must use the actual mark in US trade after filing. The title of protection shall be granted only after the applicant has submitted all the necessary documents showing the actual use of the mark.

- Where the application is filed in another country or the country of origin of the applicant: the applicant must declare the intention to use the mark in US trade, accompanied by the documents and the notarized copy of the application. already applied in another country;

Processing the application

The application form will be transferred to the examination period usually 5 months. If the application does not meet the criteria for protection, the US Patent and Trademark Office will issue a notice of refusal, the applicant has the right to file a complaint within six months. On the other hand, if the application satisfies the criteria for protection, it will be transferred to the period of publication of the application in the trademark register.

Upon the expiry of the time limit for publication in the trademark gazette, if no individual or organization objects, the applicant shall be granted a certificate of registration of the mark.
The term of protection in the US is 10 years.

4. Trademark registration in Laos, Cambodia and Myanmar

4.1 Trademark registration in Laos:

Applicants for trademark registration in Laos should apply through:
- A lawful representative in Lao PDR or;
- IP Organization in Laos.

Like other countries, Lao also applies the International Classification of Goods and Services under the NICE Agreement. Each application can only be used to register for one trademark.

Information and documentation needed for filing a trademark application:

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- Full name, address and nationality of the applicant;

- Letter of Authority notarized by the Applicant. Letter of authorization must specify the trademark. Each authorization letter is only used for the registration of one trademark; Only used for multiple trademark applications when submitted together.

- 10 (ten) samples of the mark to be registered with a size not smaller than 50 x 50 mm and not larger than 100 x 100 mm;

- The list of goods and services bearing the mark;

Registered marks will undergo evaluation periods both in form and content that can last up to 6 months. Trademarks are protected for a period of 10 years and may be extended several times in succession, for a period of 10 years.

4.2 Trademark registration in Cambodia:

Foreigners can apply for registration in Cambodia for a registered trademark in another country or the first registered trademark in Cambodia. Where the mark is registered in another country, the applicant should provide the information on the first registration application to the Cambodian Trademark Office. Where the application for registration in Cambodia is the first application, the applicant must state the "intention to use the mark" in the application.

Information and documentation necessary for trademark registration in Cambodia include:

- Full name and address of the applicant;

-Letter of authority notarized by the owner of the country;

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- 20 samples of a size of not less than 50x50 mm and not more than 80 x 80 mm;

- List of goods and services to be registered for protection;

- Documents applying for priority right (if any).

Each application in Cambodia is only registered for a trademark and for a group of products and services. The application must also be subject to review periods for content and format. Trademark registration certificates are usually issued within 5-6 months from the filing date.

The duration of trademark protection in Cambodia is 10 years from the filing date or the priority date. Trademark registration certificates may be renewed for successive ten (10) consecutive years. Upon the expiry of the period of five years from the date of filing of the registration application, the trademark owner must submit the "Use of trademark statement" if the mark is used in Cambodia or the "Not use of trademark statement" if the mark is not used. In case the trademark owner fails to file the affidavit, the mark will be suspended if requested by a third person.

4.3 Trademark Registration at Myanmar

In Myanmar, trademark registration is not compulsory because trademarks can be protected through actual use. Trademark registration, however, helps trademark owners effectively fight off infringements. After registration, the mark will be posted in the newspaper to warn about industrial property rights. The publication of this notice constitutes evidence of use of the trademark and is acceptable in civil and criminal trials against third parties.

Foreign individuals and organizations can not directly file applications in Myanmar, but must obtain a legal representative in Myanmar or a representative organization in Myanmar. Application file includes:

- Power of attorney notarized and certified by the Embassy or Consulate of Myanmar abroad;

- Statement of pocessìng of the trademark (as perform). The affidavit must be signed and sealed (if any) by the owner, notarized at the notary office, then consularly legalized at the nearest consulate of Myanmar;

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- 12 brand samples;

- List of products and/or services (not necessarily classified according to international classification);

Typically, the registration of a trademark in Myanmar goes through three steps: Trademark Search at the Competent Authority; Apply for registration; Post the press release. The period from the filing of the application to the registration of the trademark is from 4 to 6 weeks.

Myanmar does not provide for the duration of trademark protection, however, the trademark owner is advised to publish a trademark notice in the newspaper every three to five years to prevent infringement. Is evidence of the use of the mark.

Translated from: Dịch vụ tư vấn đăng ký quốc tế về quyền sở hữu trí tuệ

For more information, please contact: MINH KHUE LAW FIRM CO., LTD

Add: Room 2007, 20th Floor, C2 Building, Vincom Tran Duy Hung, Tran Duy Hung Street, Trung Hoa Ward, Cau Giay District, Hanoi.

Consult and request for Intellectual Property protection service 24/7, call 1900.6162

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Email: lienhe@luatminhkhue.vn

Look forward to cooperation with clients!

Best regards./.

Intellectual Property Department - Minh Khue Law Firm

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