Tuesday, June 27, 2017

Examination of the international application in Vietnam

1. Examination by WIPO's IB

The WIPO's IB is the body to administer the Madrid system. It is responsible for international registration and related duties as well as all other administrative tasks, under or concerning the international registration of trademark under Madrid Agreement and/or Madrid Protocol.

2. Receipt of Int'l Trademark Registration

The IB receives applications for international registration of trademark through the Offices of Origin. The application may be addressed to the IB by mail, by fax or by electronic means in a way agreed upon between the IB and the Office concerned. If the int'l trademark application is sent to the IB by telefacsimile, the original of the page of the official form bearing the reproduction of the mark should be sent to the IB then.

The IB shall promptly inform the concerned Offices of Origin of the receipt of international application by facsimile or electronic means agreed between the IB and the Offices of Origin concerned

3. Formality examination

The examination as to conformity of the international application with the applicable requirements will start (i) upon receipt of the original documents of the Int'l Trademark Application, previously sent to the IB by facsimile if such an original is received within 1 month from the date of facsimile transmission; or (ii) upon expire of the period of one moth from the date of facsimile transmission if the original of international application is not received by the International Bureau.

The WIPO's checks that the international application complies with the requirements of the Agreement or Protocol and the Common Regulations, including requirements relating to the indication of goods and services and their classification, and that the required fees have been paid.

The Office of Origin and the applicant are informed of any irregularities that must be remedied within three months, otherwise the application will be considered abandoned.

4. Registration and publication of Int'l Trademark Application

Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. A certificate of registration will be issued and transmitted to the trademark holder.

By the end of 2007, there were 483,210 international trademark registrations in force in the international register. They contained some 5.4 million active designations and belonged to 159,420 different trademark holders (of which many are small and medium-sized enterprises - SMEs)7

5. Examination by National Trademark Offices as designated Contracting Party in Vietnam

Each designated contracting party has the right to accept or refuse the protection of the international registration in its territory. In those countries where the trademark law is characterized by the substantive examination, like Vietnam, an Int'l Trademark Application will be subject for the substantive examination under the national law and regulations similar to that applied to the trademark applications filed directly.

6. Competent authority

In Vietnam, the competent authority for this responsibility is the National Office of Intellectual Property (NOIP) under the Ministry of Science and Technology.

At NOIP, there are following divisions responsible for international applications designating Vietnam: Trademark Division No. 1, Trademark Division No. 2 where the trademark examiners carry out the substantive examination of both international and national applications of trademark. As of March 2008, there are 7 examiners of international application among total 27 trademark examiners in Trademark Division No. 1 and 8 examiners of international application among total 28 trademark examiners in Trademark Division No. 2 of NOIP.

7. Substantive examination criteria

The basic requirements for substantive examination applied to the Int'l Trademark are, in principle, are similar to that applied to the national trademark. However, in the substantive examination of Int'l Trademark Applications, in a certain contracting parties, the classification of goods/services is also checked. In Vietnam, in relation to International Trademark Application, the classification of goods/services seems not to be a reason for refusal.

Similar protection criteria are provided by Vietnam IP Law that is the standard regulations for substantive examination of international applications of trademark designating Vietnam. The common reasons for refusal of international application usually raised by the trademark examiners in Vietnam are also dissatisfactory to the requirements on the distinctiveness of the mark, unity of the application and the First-to-File rule and public interest.

8. Provisional refusal issued by NOIP

Any provisional refusal must be notified to the International Bureau by NOIP as the Offices of the Contracting Parties within the time limit, i.e. 12 months.

The provisional refusal is recorded in the International Register and published in the Gazette and a copy is transmitted to the holder of the international registration.

In the provisional refusal, the trademark examiners should indicate the reasons for refusal and legal regulations applied. However, it is somehow difficult for the holder of international applications that is subject for refusal while in the provisional refusal written by the NOIP, only the number of article in the national legislation is quoted, but not the specific indication of the reason for refusal. In such case, in a very limited time, the holder of international application should seek for the local attorney's consultation.

The time limit to file an appeal against the provisional refusal for Int'l Trademark Application designating Vietnam is 3 months counted from the date the notification is notified by the International Bureau to the holder of Int'l Trademark Application. This time limit may be extended by filing a request for time extension at the NOIP through an authorized local IP Agent.

9. Grant of protection for Int'l Trademark Application

In Vietnam, NOIP will not issue a positive decision on registration in relation to the Int'l Trademark Registration if they find no reason for refusal. The protected trademark will be published in the IP Official Gazette and recorded in the National Register. The Certificate of Trademark Registration may be issued upon the holder's request.

In Vietnam, the trademark right shall be valid for 10 year from the date of international registration and may be renewed for consecutive periods of ten years. The Trademark Register based on the Int'l Registration uses the Int'l number granted by IB and NOIP do not give any additional number for international registration.

10. Other procedures concerning Int'l Trademark Registration

Any procedure subsequent to the refusal, such as review, appeal or response to an opposition, is carried out directly between the holder of the international registration and the Offices of contracting parties, without any involvement on the part of the WIPO's IB. However, a statement should be sent to the WIPO's IB once all the procedures before the Offices of contracting parties have been completed, indicating that the provisional refusal is confirmed or is totally or partially withdrawn. This statement is also recorded in the International Register and published in the Gazette.

Any assignment of trademark right under international registration may be made for some or all of the classes specified and for some or all of the designated contracting parties. Such assignment is effective only if the assignee is the one being entitled to file international applications and it is recorded in the International Register. One key point is that a request for recordal of trademark assignment can be filed at trademark offices in contracting parties (and WIPO's IB will record such assignment when it receives from relevant trademark offices) or directly to IB at WIPO by the Assignor, but not by the Assignee.

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