Why are trademarks country specific

The International Bureau does not conduct any substantive examination of applications for international registrations. It does however ensure that the correct amount of fees is paid and that the goods or services are appropriately grouped according to the classes of the Nice Classification and not described in overly broad terms. This system is accessible on CIPO's website in English or in French and provides an easy step-by step process which automatically calculate fees, including the WIPO filing fee and the fee for each contracting party that has been designated.

CIPO does not require a fee for the certification of an application for international registration; however the applicant must pay fees to the International Bureau for the filing of the international application and for each contracting party that has been designated. To estimate the applicable fees before the application for international registration is filed, you may either:.

It's important to keep in mind that in both cases, the fees will be calculated and displayed in Swiss Francs CHF and the exact amount due if paid with a credit card in Canadian dollars will depend on the conversion rate used on the day the application is filed. For more information on fees and the Madrid system you may wish to consult the following webpage:. Once an application for international registration is filed with CIPO within the Madrid eFiling system, a payment confirmation and a notification of submission will be sent to the applicant's or representative's email address that was provided.

The application will be reviewed by the CIPO examiner in order to certify that the particulars appearing in the application for international registration correspond to the particulars appearing in the basic application or basic registration, as applicable. If clarification or more information is required, the CIPO examiner will notify the applicant or representative by way of a pre-certification irregularity through the Madrid eFiling platform.

Once the international application is certified, it will be forwarded to WIPO for further processing and the applicant or representative will receive an email informing them of the certification by CIPO. Additional information on how to file an application for international registration using Madrid eFiling , including a practical step by step guide, is available on the CIPO website.

The International Bureau of WIPO will recognize the international registration date as being retroactive to the date on which the Registrar receives the application for international registration if it is certified by the CIPO examiner and forwarded to the International Bureau within two months from having received it. If, however, the certified application for international registration is not received by the International Bureau within the two month period, the international registration date is the date on which the certified application is received by the International Bureau.

If the international application meets all the applicable requirements, the International Bureau will register the trademark in the International Register. The International Bureau will also notify the Offices of the designated Contracting Parties of the international registration, inform the Office of origin and send a certificate of international registration to the applicant or representative.

This does not mean however that the trademark is automatically registered in all of the countries that have been designated. As mentioned previously, each Contracting Party will examine the trademark according to their respective legislation. As the Office of Origin, CIPO is responsible for notifying the International Bureau of any change in the scope of protection in the basic application or registration, such as the deletion of goods or services from the basic application or basic registration or if it becomes inactive , within five 5 years of the date of the international registration.

The same obligation will apply if a proceeding, such as an opposition, that began before the end of that five-year period results in a change of scope of the protection in Canada after that period. In ordinary circumstances, when ownership of an international registration is transferred, the request to record the transfer is presented directly to the International Bureau using the required form. However, in cases where the new owner is unable to obtain the signature of the previous owner of the international registration, the transfer of ownership of the international registration may be filed with the Registrar for presentation to the International Bureau but only if the transferee is a Canadian national, is domiciled in Canada or has an industrial or commercial establishment in Canada.

This request must be accompanied by evidence of the transfer and a statement that the efforts to obtain the signature of the previous owner were unsuccessful. To add more countries to an existing international registration, the owner will need to file a subsequent designation with WIPO and pay the applicable fee.

This concise, detailed, yet pragmatic guide is ideal for CFOs, compliance officers and heads of accounting who need to be able to navigate the complex tax and accounting landscape in Vietnam. With its team of lawyers, tax experts, auditors and An Introduction to Doing Business in Vietnam will provide readers with an overview of the fundamentals of investing and conducting business in Vietnam Your email address will not be published.

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Our subscription service offers regular regulatory updates, including the most recent legal, tax and accounting changes that affect your business. Topics Trademarks in Vietnam — Part Two. Trademarks in Vietnam — Part Two. There are two ways for a trademark owner to protect their trademark within Vietnam: Applications can be made either for international registration designating Vietnam through the World Intellectual Property organization, under the Madrid system; Applications can alternatively be made directly in Vietnam for national registration, through the National Intellectual Property Office NIPO Process for international registration of trademark The Madrid system that is governed by the Madrid agreement and the Madrid protocol provides one single procedure for the filing, registration and maintenance of trademarks in several territories, as long as those territories are party to the system.

It must also contain at least: A reproduction of the mark which must be identical with that in the basic mark registration A list of the goods and services for which protection is sought, classified in accordance with the International Classification of Goods and Services Nice Classification.

Step 2: Formal examination by WIPO Once the application is received by WIPO, it will conduct a formal examination of this application, but no substantive examination, as this one will takes place during the third stage. Process for national registration of trademark Vietnam is a first-to-file jurisdiction. RELATED: Trademarks in Vietnam — Part One According to the article Section 73 of the IP Law, absolute refusal grounds can be opposed for trademarks that are considered as being contrary to the public, such as trademarks consisting of signs identical with or confusingly similar to national flags or national emblems, names of Vietnamese State bodies or leaders, or seals belonging to international or national organization.

Regarding the documents to be provided in the application, the mark application shall consist of the following documents: A request made in prescribed form as prescribed in the Circular No. In addition to those who may wish to profit off of your name, similarly, there are those who may just go so far as to replicate your product for their own gain, trademark and all. The counterfeit market is a boom industry overseas, especially when companies do not register their trademarks internationally.

While U. It helps you proactively involve the local government in the country where the illicit products are being made, and as such can help prevent counterfeit items from reaching shores other than those of the U. Even if you choose not to sell your products worldwide, they may have international reach in other ways — for instance, in your manufacturing supply chain.

The Madrid Protocol , depending upon your home country and the other countries in which you wish to register your trademark, can be a streamlined way to receive international protection based on local law with fewer application steps.

Who can apply for international trademarks? The possibility of applying for an international trademark is restricted to natural or legal persons who meet one of the following conditions: Have a domicile or a commercial or industrial establishment in any of the countries belonging to the Madrid System. Be a national of one of the countries belonging to the Madrid System. Basic trademark: prerequisite to apply for an international trademark It is not possible to directly apply for an international trademark.

Dependency on the basic trademark: Central attack and transformation The validity of the international trademark will depend on the validity of the basic trademark for five years. Duration and continuance in force of the international trademark The duration of the international trademark is ten years from its date of application, and it is renewable indefinitely.

Drawbacks of the International Trademark System Dependency on the basic trademark for five years after registration. Certain countries do not issue registration certificates, so it may be necessary to request a registration certificate from the National Office in order to distribute products designated with the trademark in a specific country or in order to enforce the trademark. Despite having signed the Madrid Agreement and Protocol, in some African countries international trademarks are not enforceable against infringers since their courts do not recognise the effects of the international trademark.

This figure presents the numbers and annual growth rates of international applications filed via the Madrid System. Christine has more than 25 years of experience in the field of Distinctive Signs and is the head of the Trademark Department. Share this post with interested parties. Subscribe to our newsletter.

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