How to overcome the refusal Notice of Madrid trademark designating Vietnam

14/12/2021 - 1094 views

In recent years, the number of international registration Madrid trademark designating Vietnam has increased. To be able to be registered trademark in Vietnam, a mark must comply with the definition and conditions of the Vietnamese IP law. Otherwise, an international registration of Madrid trademark in Vietnam may be refused. This article provides some helpful hints to overcome the refusal Notice of international registration trademark designating Vietnam under Madrid system.

 

  1. Processing of international registration of Madrid trademark designating Vietnam

 

Following receipt of a notice  from the International Bureau on an international registration trademark designating Vietnam under Madrid system, the National Office of Intellectual Property of Vietnam (IPVN) shall conduct the substantive examination of the application in accordance with the procedures applicable to trademark registration application filed directly with the IPVN. Within 12 months since the issuance date of the International Bureau’s notice, the IPVN shall make a conclusion on protectability of the Madrid trademark designating Vietnam.

For Madrid trademark designating Vietnam that includes all or some of goods and services failing to satisfy protection conditions, before the expiration of the 12-month period above, the IPVN shall issue a notice of provisional refusal of trademark registration designating Vietnam, made using the Model Form 3 of the International Bureau and specifying contents and reasons thereof to the International Bureau of WIPO.

 

  1. The deadline to respond the refusal Notice of Madrid trademark designating Vietnam

 

Under Vietnam law regulation regarding international registration of Madrid trademark designating Vietnam, the deadline for filing a response to the Office Action is 03 months from the sending date of the Refusal Notice from IPVN to WIPO, which is shown in the Notification from WIPO to the application. Within those 03 months, the holder may correct errors or express his/her dissenting opinion.

In case the holder may need time to review and prepare necessary material to support response, it is possible to file an extension of time to IPVN for filing response, with a fee, via a registered local IP Agent.

The deadline to respond the refusal Notice of Madrid trademark designating Vietnam is 03 months from the Date on which the Notification was sent to WIPO by IPVN

  1. Qualification of representative

 

According to Vietnam IP legislation, a request for extension of time or possible response to refusal Notice of Madrid trademark designating Vietnam must be submitted in due time through an authorized and registered Vietnamese IP Agent, such as Ageless IP Attorneys and Consultants. All correspondences between the IPVN and the trademark holder must be made by and forwarded to the authorized Vietnamese IP Agent.

 

  1. Requirements to response the refusal Notice of Madrid trademark designating Vietnam

 

To file a necessary response to the refusal Notice, an executed Power of Attorney, POA, which is signed by an authorized person of the registrant is required. The scanned copy of POA is acceptable for filing, but the original one must be submitted within one month later.

 

  1. Other helpful hints to overcome the provisional refusal of Madrid trademark designating Vietnam

 

  • In case the Madrid trademark designating Vietnam is refused for a part of goods/ services you and the holder agrees with the IPVN, no response is required. And the IPVN will accept protection for the remaining part of the goods/ services.
  • Request for adjustment of the trademark sample is not accepted.
  • Cannot divide applications of Madrid trademark designating Vietnam – although the Madrid system allows to divide application, Vietnam has not yet applied it.
  • The limitation of the list of goods/ services that need to be submitted directly to the International Bureau of WIPO by the holder or the holder’s representative is recorded on the Madrid database.

 

With our experience of working in intellectual property field, especially trademarks in Vietnam, Ageless are committed to providing you with the best services quality and values.

Should you have any further questions regarding Madrid trademark designating Vietnam, please do not hesitate to contact us via our email info@ageless.vn. We always remain at your disposal for any further question at any time.