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Vietnamese businesses are increasingly looking beyond domestic markets to expand their brands globally. Filing international trademark applications is a crucial step to protect brand identity abroad, but the process requires thorough preparation to avoid costly mistakes.
Understanding International Trademark Protection
International trademark protection is not automatic. A registration in Vietnam only covers Vietnamese territory. To gain protection abroad, businesses can either file directly in each target country or use international systems such as the Madrid System, administered by WIPO, which allows one application to cover multiple jurisdictions.
Assess Trademark Eligibility
- Conduct a comprehensive search in Vietnam and potential foreign markets.
- Check distinctiveness and avoid marks that are generic, descriptive, or already in use.
Decide on Filing Route
- National route – File directly in each target country’s trademark office.
- Madrid System – File one international application designating multiple countries, based on an existing Vietnamese registration or application.
Prepare Required Documentation
- The application (form) of international trademark registration.
- Clear representation of the mark (word, logo, or combined).
- List of goods and services under the Nice Classification.
- Power of attorney if using representatives abroad.
- Priority documents if claiming priority under the Paris Convention.
Budgeting and Costs
- Official fees – Vary depending on the number of designated countries and classes.
- Professional fees – For handling searches, translations, and legal representation.
- Maintenance and renewal – Renewals are usually every 10 years.
Common Mistakes to Avoid
- Assuming that a Vietnamese trademark automatically guarantees protection overseas.
- Filing without a prior search in foreign jurisdictions.
- Choosing too many countries without assessing actual business plans.
- Failing to meet strict deadlines for priority claims or responses to office actions.
FAQs
1. Can I file an international application without a Vietnamese registration?
No. An international application under the Madrid System must be based on a Vietnamese trademark application or registration.
2. How long does international registration take?
On average, 12–18 months, depending on the designated countries and whether oppositions arise.
3. What if my mark is refused in one country?
Refusal in one country does not affect protection in other designated countries.
4. Do I need local representatives in each country?
Yes, if the global trademark filing faces objections or oppositions in a designated country, local representation is required.
5. How long does international protection last?
Registrations are generally valid for 10 years and can be renewed indefinitely.
Conclusion
Preparing for international trademark registration requires careful planning, from conducting searches and selecting filing routes to budgeting and managing deadlines. For Vietnamese businesses aiming to build global brands, understanding the international framework and avoiding common pitfalls ensures stronger and more effective brand protection worldwide.
ASL Law is a leading full-service and independent Vietnamese law firm made up of experienced and talented lawyers. ASL Law is ranked as the top tier Law Firm in Vietnam by Legal500, Asia Law, WTR, and Asia Business Law Journal. Based in both Hanoi and Ho Chi Minh City in Vietnam, the firm’s main purpose is to provide the most practical, efficient and lawful advice to its domestic and international clients. If we can be of assistance, please email to [email protected].
ASL LAW is the top-tier Vietnam law firm for Intellectual Property Services. If you need any advice, please contact us for further information or collaboration.
