Procedures for converting an international trademark registration into an application filed according to the national format in Vietnam

Procedures for converting an international trademark registration into an application filed according to the national format in Vietnam (Internet image)

Regarding this issue, LawNet would like to answer as follows:

Procedures for converting an international trademark registration into an application filed according to the national format are prescribed in Decision 2060/QD-BKHCN in 2023 as follows:

1. Dossier requesting conversion of international trademark registration into an application submitted according to national format in Vietnam

- Components of the dossier requesting the conversion of international trademark registration into an application filed according to national format, including:

+ Trademark registration declaration converted from an invalid trademark international registration according to Article 9 of the Madrid Protocol according to Form No. 03 in Appendix II of Decree 65/2023/ND-CP;

+ Trademark samples (05 samples measuring 80 x 80 mm) and a list of goods and services bearing the trademark;

+ Power of attorney (if applying through a representative);

+ Documents proving priority rights, if claiming priority rights;

+ Copy of fee payment voucher (in case of payment of fees and charges via postal service or direct payment to the Intellectual Property Department's account).

- Methods to submit an application to convert an international trademark registration into an application filed according to the national format:

+ Online through the information system for handling administrative procedures of the Ministry of Science and Technology;

+ Directly or via postal service to the headquarters of the National Office of Intellectual Property in Hanoi or 2 representative offices of the Department in the city. Ho Chi Minh and Da Nang.

2. Procedures for converting international trademark registration into an application filed according to national format in Vietnam

- Step 1: Receive application

Organizations and individuals submit 01 set of documents requesting the conversion of international trademark registrations into an application submitted according to national format to the National Office of Intellectual Property.

- Step 2: Verify the application form

+ In case of conversion from an international trademark registration application to an application filed according to national format: the National Office of Intellectual Property checks compliance with the regulations on conversion conditions and form of the application, thereby making a conclusion whether the application is considered valid or not, and does the following:

(i) If the application is valid, the National Office of Intellectual Property issues a decision to accept the valid application;

(ii) If the application is invalid, the National Office of Intellectual Property refuses to accept it.

+ For cases of conversion from international registration that have been accepted for protection in Vietnam: the National Office of Intellectual Property assesses compliance with regulations on conversion conditions.

- Step 3: Announce the application

After a decision is made to accept a valid application, the application will be published in the Industrial Property Official Gazette.

- Step 4: Appraise the content of the application

+ In case of a conversion from an international trademark registration application: assess the possibility of protection of the subject stated in the application according to the protection conditions, thereby determining the corresponding scope of protection.

+ For cases of conversion from international registration that have been accepted for protection in Vietnam: the National Office of Intellectual Property does not re-examine the content.

- Step 5: Make a decision to grant/refuse to grant a protection title:

+ If the subject matter stated in the application does not meet the protection conditions, the National Office of Intellectual Property will issue a decision to refuse to grant a protection title;

+ If the subject stated in the application meets the protection requirements and the applicant pays fees and charges in full and on time, the National Office of Intellectual Property will issue a decision to grant a protection certificate, record it in the National Register of Trademarks, and publish it in the Industrial Property Official Gazette.

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