Should you proceed an international trademark registration?

Trung Nguyen is a famous coffee brand in Vietnam. In 2000, Trung Nguyen want to expand its business to the United States with the ambition to bring a Vietnamese coffee brand to the world. However when Trung Nguyen takes first step into the market, the brand “Trung Nguyen coffee” has already been registered in the US by other competitor called Rice Field. After two year of exhausted negotiation, Trung Nguyen Legend finally regain the trademark. In return, let Rice Field become their exclusive agent in the US market.

Though this took place more than a decade ago, Trung Nguyen story is still a memorable lesson for businesses about fierce competition of markets. Therefore, the sooner you register the better your trademark is protected. 

Trademark is only protected within the country on registered base or proof of use. Therefore, if you want a broad protection over many countries, you have to file an application to each country or designate them through the Marid Monitor System. 

Choose the way to file

First, you should decide which way to submit your trademark application. A trademark can be registered directly at the state’s national office or through international system (regulated by Marid Agreement and Protocol related to Marid Agreement). You could only file through this system if the designated country is a member of the Agreement and Protocol. Whereas, direct submission requires a representative to proceed the registration on your behalf. Accordingly, you have to contact the foreign agent, exchange information with them, deal price and deliver dossier to another country regardless of lost in transit

On international filing process, your application will be file at IP National Office then transmitted to the World Intellectual Property Organization (WIPO) and be examined at the office of appointed parties for protection. The application in your national office shall be original one used to designate other countries. With only one application- one procedure, you can register your brand in many countries. However, you have to pay additional fee for those intermediaries to proceed with your application. Moreover, the examination period lasts for a period of  12 to 18 months which is longer than real examined time in a few countries (Example: it takes only 9-12 months to register a trademark in the US). This international registration system is only applicable in the state members of Marid Agreement and Protocol related to the agreement.  

Information in the application

When filing an international application make sure that all information (such as: specimen, applicant name, address, product/services) in the original application are identical to the international version 

In some countries, products / services bearing the mark are categorized according to a domestic rules rather than international classification of Goods and Services _ Nice classification 

For example: If a trademark in the original application has colors, those colors shall be fully described in the international version. Equivalently, the international registration does not claim protection of color while the basic does the international application will be rejected.

Any changes in regarding the applicant name, address should be made in the in the original application before going through the international system in order to avoid complex procedure or being rejected. 

Required Documents

For direct registration, the following required documents are:

– Specimen of mark

– The list of goods and services 

– Authorization paper 

– the applicant name and address 

For WIPO filing, dossiers needed to submit to the Intellectual Property Office are:

– 02 copies of the MM2 Declaration (02 copies of MM18 in case the trademark international registration application designates to the United States;)

– 05 Specimens of mark

– A copy of the establishment registration form

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